TRADEMARKS 


TRADE  NAMES 


MUNN  &  CO. 
NEW  YORK 


UNIVERSITY 

OF  CALIFORNIA 

LOS  ANGELES 


SCHOOL  OF  LAW 
LIBRARY 


TRADE  MARKS 


TRADE  NAMES 


FOR  THE    BUSINESS  MAN 


MUNN  &  CO., 
'"NEW  YORK 


Copyright,  1912 
BY  MUNN  &  COMPANY 


FOREWORD 

The  purpose  of  this  little  book  is  to  present,  in  the 
simplest  manner,  consistent  with  comprehensiveness, 
an  interpretation  of  the  Federal  statutes  concerning 
trade-mark  registration  and  protection. 

As  the  book  is  intended  for  business  men,  we  have 
avoided  legal  phraseology  as  much  as  possible  as  well 
as  long  quotations  from  court  decisions,  except  where  the 
inclusion  of  such  excerpts  was  found  necessary  to  a  clear 
understanding  of  the  subject. 

Our  large  trade-mark  practice,  extending  over  many 
years,  has  developed  the  conviction  in  our  minds  that  a 
great  deal  of  useless  labor  in  devising  trade-marks  that 
cannot  be  registered — to  say  nothing  of  vexatious 
litigation  over  defective  marks — might  be  obviated  by 
some  such  publication  as  this. 

We  call  the  attention  of  those  who  are  interested  in 
trade-marks  to  the  superior  facilities  of  our  trade-mark 
department  for  handling  business  of  this  character. 

Our  service  includes  not  only  registration  of  trade- 
marks, and  general  trade-mark  practice  before  the 
Patent  Office,  but  also  registration  of  trade-marks  in 
foreign  countries  and  the  registration  of  foreign-owned 
marks  in  the  United  States. 

Among  our  trade-mark  clients  are  many  of  the  largest 
and  most  successful  business  enterprises  in  America. 

MUNN  &  COMPANY 

NEW  YORK  AND    WASHINGTON 


CONTENTS 


PAGE 
CHAPTER      I — The  Trade-Mark  as  a  Business  Asset 1 

CHAPTER    II— The  Federal  Trade-Mark  Law 7 

The  Act  of  1905 8 

Association  Trade-Marks 10 

The  Ten  Years'  Clause 11 

Classification  of  Merchandise 11 

Registration  Involves  Obligation 13 

Affixation 13 

Rules  of  the  Patent  Office 13 

Number  of  Rejected  Applications 14 

CHAPTER  III — Analysis  of  the  Requirements  for  Registration.  15 
A  Trade-Mark  Must  Not  Be  Identical  with 

Another  Already  in  Use 15 

Red  Cross  Trade-Marks 17 

Descriptive  Marks 17 

Geographical  Marks 20 

A  Trade-Mark  Must  Not  Be  National  Insignia  .  22 
Conditions  Under  Which  a  Personal  Name 

May  Be  Registered 22 

Registration  of  Portraits 23 

A  Trade-Mark  Must  Not  Misrepresent 23 

Trade-Marks  Not  Registrable  When  Opposed 

to  Public  Policy 24 

Other  Restrictions 24 

Proposed  Amendment  to  Law 25 

Trade-Mark  Status  of  Patented  Articles 25 

CHAPTER  IV — The  Elements  of  a  Good  Trade-Mark 27 

Nine  Tests  of  a  Desirable  Trade-Mark 29 

Special  Notice 31 

CHAPTER     V— Trade-Mark  Protection 32 

CHAPTER  VI — Munn  &  Company 38 

Assignment  of  Trade-Marks 39 

Information  Required  in  Making  Application 

for  Registration 39 

Registration  in  Foreign  Countries 40 

Our  Facilities 40 

Trade-Mark  Protective  Bureau 41 


CHAPTER  I 
The  Trade-Mark  as  a  Business  Asset 

IF  you  should  find  in  your  Santa  Claus  stocking,  next  Christ- 
mas, a  gift  for  the  exclusive  right  to  use  the  word  "  Royal" 
as  a  name  for  baking  powder,  you  would  be  eight  million 
dollars  richer  than  you  were  the  day  before. 

It  is  said,  on  good  authority,  that  the  Royal  Baking  Powder 
Company  considers  its  trade-mark  worth  just  $1,600,000  a  letter. 
This  is,  perhaps,  the  most  valuable  trade-mark  in  ^existence, 
though  it  is  rivaled  in  value  by  "Kodak,"  "Uneeda,"  "Ivory" 
(as  applied  to  soap),  "Coca-Cola,"  the  name  "Gillette"  used  in 
connection  with  safety  razors,  and  a  half  dozen  others.  Each 
of  these  trade-marks  has  become  a  national  institution.  To 
displace  them  in  the  public  mind  would  require  competition  of 
unheard-of  magnittide  and  energy. 

The  name  "Coca-Cola"  is  worth  at  least  five  million  dollars; 
the  Gorham  silver- ware  mark  two  millions,  at  a  fair  estimate; 
the  trade-marks  of  the  National  ^_ 
Biscuit  Company,  all  of  which  ^^>n^a 
touch  the  highest  standard  of  dis-  m  fjfA 
tinctiveness,  must  be  the  largest  •  *^52 
asset  of  that  concern;  and  the  ^-— -*"^i 
name  ' '  Kodak ' ' — where  would  the  A  FI VE-MILLI 
Eastman  Company's  business  go  MARK. 

to  if  it  should  hand  over  the  trade-mark  "  Kodak"  to  some  other 
concern,  and  go  on  making  the  same  goods  under  the  name  of 
Smith's  Hand  Cameras? 

When  the  American  Tobacco  Company  was  recently  dissolved 
into  separate  companies,  under  the  order  of  the  Supreme  Court, 
the  trade-marks  of  the  combination  were  estimated  to  have  a 
value  of  $4^,000,000,  out  of  total  assets  of  $227,000,000. 

The  aggregate  total  value  of  well-known  American  trade- 
marks must  be  in  the  hundreds  of  millions  of  dollars.  But  any 
estimate  of  the  value  of  a  trade-mark,  apart  from  the  business 
to  which  it  applies,  is  necessarily  a  mere  guess,  for  a  trade-mark 
is  a  species  of  commercial  property  that  cannot  be  sold  by  itself. 
It  is  inseparably  attached  to  the  business  from  which  it  emanates, 
and  cannot  be  transferred  without  a  transfer  of  the  business. 
There  are  cases  where  a  concern's  trade-mark  has  become  so 
valuable,  through  long  years  of  popularity  and  profit-making, 
that  it  entirely  overshadows  all  other  assets  of  the  business — in 
short,  the  business  could  not  exist  without  it. 

A  trade-mark  is  a  symbol  of  Good- Will — using  the  words 
"Good- Will"  in  the  same  sense  that  the  bookkeeper  uses  them. 
It  stands  for  built-up  reputation ;  it  is  the  link  that  connects  the 


Trade-Marks. 


ultimate  consumer  with  the  manufacturer.  It  preserves  the 
identity  of  merchandise,  and,  in  carrying  out  this  function,  it  is 
a  device  of  inestimable  value  to  the  commercial  world. 

Sometimes  a  complex  chain  of  events  is  best  explained  by  a 
simple  illustration.     With  this  idea  in  mind,  let  us  put  ourselves 
in  the  place  of  a  woman  who  wants  a 
cake   of    Ivory    Soap.     She    lives    in    a 
desert  town  in  Arizona.      She  cannot  go 
half  across  the  continent  to  Cincinnati 
to  buy  a  five-cent  cake  of  soap  from 
Procter  &  Gamble.      In  fact,  it  is  a  safe 
bet  that  she  never  heard  of  Procter  & 
Gamble,  but  she  knows  that  she  wants 
Ivory    Soap.      So    she    sends    her    little 
girl  down  to  the  "general"  store,  and 
this  lisping  messenger  asks  for  ' '  Ivory ' ' 
Soap — not     just     plain      "soap" — and 
brings    the   familiar   package    with   the 
name  on  it  back  to  her  mother.     If  the 
THIS    DRESSED-UP    DUCK-   storekeeper  sends  some  other  kind  of 
LING   is    THE    TRADE-MARK   soap    the    owner   of    the    nickel    knows 
OF    MERRIMACK    DUCKLING  instantly  that  she  did  not  get  what  she 

wanted. 

By  means  of  the  trade-mark  "Ivory"  the  manufacturers  in 
Cincinnati  deal  with  this  buyer  in  Arizona  as  surely  and  as 
expeditiously  as  if  the  lived  across  the  street  from  their  factory. 
Trace  this  transaction  backward,  and  you  will  find  its  trail 
running  unerringly  through  the  retailer,  the  wholesaler,  and  the 
jobber  to  the  manufacturer — and  at  every  stage  of  its  journey 
the  product  kept  its  personality.  It  left  Cincinnati  as  Ivory 
Soap,  and  as  Ivory  Soap  it  was  put  into  the  consumer's  hands. 
Selling  by  trade-mark  is  one  of  the  miracles  of  modern  mer- 
chandising. Its  development  to  a  state  of  high  efficiency  has 
taken  place  during  the  last  hundred  years. 


Competition  is  the  basis  of  the  modern  industrial  system. 
Plainly  defined,  a  competitive  system  means  a  system  under 
which  every  trader,  large  and  small,  must  be  prepared  to  justify 
his  existence  at  any  time. 

In  the  early  centuries  of  English  industrial  life,  competition 
in  the  modern  sense  was  unknown,  as  Townsend  Warner  points 
out  in  his  "Landmarks  of  Industrial  History."  For  centuries 
after  the  Norman  conquest  of  England,  all  manufactured  articles 
were  produced  by  craftsmen — each  master  craftsman  working 
in  his  tiny  shop  with  two  or  three  apprentices. 

All  craftsmen  belonged  to  gilds,  whose  status  and  authority 
were  recognized  by  the  law  of  the  time.  These  gilds  fixed  the 
prices  of  commodities — a  price  "fair  to  the  seller  and  fair  to  the 
buyer."  A  craftsman  could  not  push  his  trade  beyond  his  own 
immediate  locality,  because  in  that  event  he  would  come  in 


Trade-Names. 


SAPOLIO 


conflict  with  his  brother  craftsmen.  He  made  shoes,  or  harness, 
or  wove  rough  woolen  coats,  and  sold  them  to  his  neighbors  at 
a  price  that  was  fair  to  him  and  fair  to  them,  and  in  somnolent 
old  age  was  gathered  to  his  fathers,  without  having  heard  the 
word  "competition"  or  its  equivalent  in  burly  Saxon-French. 

With  the  decay  of  centuries,  the  gilds  slowly  passed  away, 
and  upon  their  ruins  arose  the  modern  factory  system. 

In  the  new  adjustment  of  things,  here  and  there  a  craftsman 
with  more  energy  and  a  longer  financial  head  than  his  fellows, 
began  to  extend  his  trade,  and  employ  more  journeymen  and 
apprentices. 

In  1550  John  Winchcombe,  "Jack 
of  Newbury,"  a  woolen  weaver,  had  a 
hundred  looms  at  work  in  his  own 
house,  and  Winchcombe  woolens  were 
known  as  far  as  Antwerp.  At  the 
same  time,  London  craftsmen  were 
selling  their  goods  all  over  England-  -PKAS 

or,  at  least,  in  the  larger  towns,  and  there  DR.  CAMERON,  A  PHYSICIAN. 
was  a  growing  trade  with  Flanders. 

These  manufacturers,  as  the  circle  of  their  trade  expanded, 
began  to  see  the  desirability  of  marking  their  products  in  some 
way  to  identify  them,  so  that  purchasers  at  a  distance  would  be 
able  to  distinguish  them  from  similar  articles  produced  by  others. 

Any  device  for  identifying  a  commercial  product  is  a  trade- 
mark, in  the  broad  significance  of  the  term. 

Some  of  the  early  trade-marks  were  rude  initials  and  cryptic 
designs  of  interlaced  crosses  and  circles.  Others  consisted  of 
dragons  and  winged  snakes,  and  various  real  and  unreal  animals. 

The  craftsmen  of  the  fifteenth  and  sixteenth  centuries  were 
the  first  users  of  trade-marks  in  England. 

The  flickering  torch  of  the  antiquarian  throws  a  dim  light  on 
some  sort  of  trade-mark  usage  current 
among  the  Greeks  and  Romans,  and  even 
among  more  ancient  trading  peoples,  but 
these  researches  hold  but  little  of  interest 
to  us.  Our  present  purpose  is  to  consider 
the  function  of  the  trade-mark  in  modern 
business,  and  with  that  thought  in  mind,  it 
may  be  taken  as  an  established  fact  that 
trade-marks,  in  the  modern  sense,  have  a  continuous  history  of 
perhaps  five  hundred  years. 

In  the  early  part  of  the  seventeenth  century  the  gold-beaters 
of  Nuremberg  were  using  trade-marks,  and  they  had  systematized 
their  use  to  such  an  extent  that  an  official  register  of  gold-beaters' 
marks  was  kept  and  penalties  for  the  misuse  or  counterfeiting  of 
trade-marks  had  been  established  a  law.  This  register  has  been 
preserved.  Its  yellowed  pages  are  decorated  with  curious  de- 
vices of  serpents  and  dragons,  doves  and  crosses.  Without 
exception,  the  marks  of  the  Nuremberg  gold-beaters  were  picture 
marks. 


Trade-Marks. 


2) 


In  the  early  part  of  the  eight- 
th    century  the  use  of  trade- 


eenth 

marks  was  general,  in  certain 
lines  of  trade,  throughout  Europe. 
But  the  lack  of  specific  legisla- 
tion for  the  registration  of  trade- 
marks at  that  time — a  lack  that 
persisted  until  the  nineteenth 
century — leads  one  to  the  con- 
clusion that  these  eighteenth  cen- 
tury traders  did  not  attach  great 
importance  to  the  subject.  They 
evidently  considered  the  trade- 
OF  THE  EIGHTEENTH  CENTURY.  mark  a.  mere  minor  accessory  of 

business. 

The  early  decades  of  the  nineteenth  century  witnessed  the 
rise  of  three  great  forces  which  were  destined  to  accomplish,  in  a 
short  time  the  most  profound  changes  in  manufacturing  and 
selling  methods.  These  forces  were: 

i  st.       The  application  of  steam  power  to  manu- 
facturing in  a  large  and  economical  way. 
2nd.     The  development  of  cheap  and  quick  trans- 
portation. 

3rd.      The  invention  of  means  for  the  rapid  dis- 
semination of  intelligence. 

Factories,  employing  thousands  of  hands — great  industrial 
monuments  to  Cheap  Power — had  inevitably  to  find  distant 
markets  for  their  products.  No  longer  could  the  manufacturer 
sit  at  home  and  await  the  buyer.  His  product  was  too  large, 
and  its  burden  was  too  heavy  to  carry  on  a  haphazard  sales 
plan.  Consequently,  the  selling  departments  of  all  enterprises 
grew  tremendously  in  importance.  Customers  were  sought  across 
the  breadth  of  a  continent.  Many  a  manufacturer's  sales  area 
grew,  in  the  span  of  a  generation,  from  a  few  hundred  square 
miles  to  a  region  that  included  every  degree  of  climate  from  the 
Arctic  to  the  Torrid. 

To  accomplish  this  result  efficient  selling  methods,  and 
economical  and  fast  transportation,  were  required. 

As  a  natural  consequence  of  these  conditions  trade-marks 
grew  in  importance.     Manufacturers  without  trade-marks  found 
that  they  had  no  hold  on  their 
trade.      The  consuming  public 
did   not  know  them   or  their 
products  by    name,   and   they 
were     at    the    mercy    of    the 
SHAPED  SOMEWHAT  LIKE  A  WISH-BONE,   jobber,  the  wholesaler  and  the 
retailer.         They     were     sup- 
ported by  a  chain  of  circumstances,  of  which  every  link  was 
weak. 

On  the  other  hand,  manufacturers  whose  trade-marks  were 
firmly  fixed  in  the  public  mind  by  reputation  began  to  see  that 


"WISHBONE" 

Registered  Trad*  Mark 


Trade-Names. 


they  were,  to  a  large  degree,  independent  of  the  merchandising 
chain.  The  ultimate  consumer  knew  their  trade-marked  prod- 
ucts, and  asked  for  them  by  name. 

Thus,  by  a  process  of  natural  evolution,  the  trade-mark 
developed  in  importance  from  a  workman's  tool  mark  to  a 
symbol  of  Good- Will — a  business  asset  in  a  tangible  form. 

It  is  an  axiom  of  legal  philosophy 
that  when  a  thing  becomes  valuable 
or    desirable,    legislation    concerning 
its  regulation  and  protection  springs 
into  being.     Consequently  one  looks 
for,     and    finds,     the    beginning    of     (Trademark  Reg.  u.  s.  Pat.  Off.) 
specific  legislation  on  the  subject  of          THIS     TRADE-MARK     OF     A 
trade-marks  around  the  end  of  the      DUSTLESS    MOP    is    AN    EX- 
first     quarter     of     the     nineteenth      ^0^™^  °F  LE 
century. 

Before  the  first  trade-mark  legislation,  cases  of  infringement 
fell  under  the  common  law,  and  were  decided  in  courts  of  equity. 

H.  D.  Nims,  a  well-informed  writer  on  trade-marks,  says  in 
his  "Law  of  Trade-Marks  and  Unfair  Trade": 

"It  is  rarely  that  one  life  sees  the  genesis  and  maturity  of  law, 
yet  it  has  almost  seen  them  of  trade-mark  law.  In  the  eighteenth 
century  there  were  a  few  scattered  decisions  which  turned  almost 
wholly  on  the  question  of  fraud.  With  the  rise  and  growth  of 
machine-made  merchandise  in  the  earlier  part  of  the  last  century, 
the  matter  of  private  marks  of  merchants  to  distinguish  wares 
going  out  into  the  public  markets  of  the  world  assumed  importance 
and  cases  multiplied.  Trade-mark  law  is  one  of  the  results  of 
machinery.  It  is  safe  to  say  that  the  great  mass  of  trade-mark 
and  unfair-trade  law  is  the  development  of  the  last  forty  years." 

A  structure,  of  which  the  foundation  has  been  so  recently 
laid,  must  necessarily  be  still  unsettled.  The  rulings  of  both  the 
Patent  Office  and  the  courts  are,  in  many  cases,  contrary  to 
precedent.  In  some  instances,  courts  in  different  parts  of  the 
country  have  handed  down  contradictory  decisions  bearing  on 
the  same  question.  But,  despite  these  drawbacks,  a  body  of 
trade-mark  law  is  being  slowly  formed,  and  it  is  only  a  question 
of  time  before  our  feet  will  be  on  firm  ground. 

Trade-mark  cases  should  be  entrusted  to  lawyers  who  have 
specialized  in  this  branch  of  the  law.  The  legal  status  of  this 
subject  is  changing  so  swiftly  that  an  ordinary  lawyer,  absorbed 
in  general  practice,  cannot  keep  track  of  it. 


A  trade-mark  has  been  defined  as  follows: 

"A  trade-mark  may  be  tersely  denned  to  be  any  sign,  mark, 
symbol,  word  or  words  which  indicate  the  origin  or  ownership  of 
an  article  as  distinguished  from  its  quality,  and  which  others  have 
not  the  equal  right  to  employ  for  the  same  purpose.  In  its  strictest 
sense,  it  is  applicable  only  to  a  vendible  article  of  merchandise  to 
which  it  is  affixed." 

(Ball  v.  Broadway  Bazaar,  Court  of  Appeals,  N.  Y.,  87  N.  E. 
674.) 

We  give  this  definition  because  it  expresses  in  the  fewest 
possible  number  of  words  the  function  and  limitations  of  trade- 


6 


Trade-Marks. 


marks.  Also,  because  there  is  in  the  minds  of  many  business 
men,  a  confused  notion  of  the  difference  between  a  trade-mark 
and  a  trade-name.  By  referring  to  the  definition  it  will  be  noted 
that  a  trade-mark  is  "applicable  only  to  a  vendible  article  of 
merchandise  to  which  it  is  affixed." 

On  the  other  hand,  a  trade-name  applies  to  a  business  as  a 
whole,  although  this  business  may  be  engaged  in  the  sale  of  not 
one  vendible  article  only,  but  a  thousand.  For  instance, 
"  Wanamaker's"  is  a  trade-name  and  "  Kodak"  is  a  trade-mark. 
A  trade-mark  has  no  value  except  that  created  by  the  quality, 
sale,  popularity  and  profit  in  the  article  to  which  it  is  affixed. 
No  matter  how  distinctive,  or  attractive  a  mark  may  be,  it  is 
worth  but  little  if  it  is  used  in  connection  with  an  inferior  article 
or  with  an  article  sold  without  profit. 

But  a  distinctive  and  suggestive  trade- 
mark is  of  immense  help  in  advertising  and 
selling.  Consider,  for  example,  the  trade- 
mark of  Old  Dutch  Cleanser.  It  is  full 
of  human  interest,  motion,  life,  and  sug- 
gestion. It  brings  up  in  the  mind  the 
mental  picture  of  dirt  fleeing  from  an 
energetic  Dutch  scouring  woman.  That 
this  mark  has  been  a  powerful  aid  to  sales 
is  obvious.  Suppose  Old  Dutch  Cleanser 
had  been  called  Climax  Cleaning  Powder. 
Can  you  imagine  anybody  acquiring  more 
than  the  most  languid  interest  in  anything 
reminds  one  of 


TRADE-MARK. 


with  a  name  so  dull? 
hard  and  sordid  toil. 


CHAPTER  II 
The  Federal  Trade-Mark  Law 

THE  function  of  a  trade-mark  is  to  denote  origin.  As  we 
pointed  out  in  the  preceding  chapter,  the  necessity  for  using 
trade-marks  arose  as  soon  as  the  expanding  wave  of  trade 
carried  a  craftsman's  goods  to  customers  outside  of  his  own 
community.  The  ancient  trade-mark  was  a  simple  device  in- 
vented for  the  purpose  of  enabling  a  maker  of  any  commodity 
to  hold  his  out-of-town  customers,  so  to  speak,  by  enabling  them 
quickly  and  surely  to  identify  his  goods. 

Throughout  its  history  the  trade-mark  has  remained  true  to 
its  ancient  antecedents,  and  its  purpose  to-day,  as  it  was  in  the 
fifteenth  century,  is  specifically  to  indicate  the  origin  of  an 
article  of  merchandise. 

In  this  aspect  of  unchanging  purpose,  the  trade-mark  is 
somewhat  an  anomaly  in  commercial  history.  During  the  last 
four  hundred  years,  methods  of  manufacture,  distribution  and 
sale  have  been  revolutionized  from  top  to  bottom :  banks,  which 
began  as  mere  money-changing  offices,  have  become  establish- 
ments for  keeping  and  loaning  funds;  the  retailer,  who  used  to 
sit  in  a  hole  in  the  wall  with  a  handful  of  goods,  all  of  the  same 
kind,  has  developed  into  a  merchant  selling  ten  thousand 
different  articles;  the  craftsman,  who  once  served  a  long  ap- 
prenticeship, during  which  he  learned  to  make  every  part  of  a 
shoe  or  a  carriage,  has  become  a  specialized  laborer,  employed 
by  the  day  to  produce  the  extreme  subdivision  of  a  finished 
article. 

It  is  strange  that,  in  all  this  evolution  of  commercial  methods, 
the  trade-mark  did  not  undergo  a  change  in  function.  It  might 
have  become,  by  a  gradual  transformation,  a  merchant's  mark, 
applied  indiscriminately  to  all  goods  of  every  description  sold  by 
him.  Or,  it  might  have  evolved  into  a  stamp  of  merit  or  high 
quality,  regulated  by  statute  and  licensed  only  to  manufacturers 
who  could  prove  their  right  to  use  it. 

But  none  of  these  changes  has  taken  place,  and  the  trade- 
mark of  the  twentieth  century  has  for  the  beginning  and  end  of 
its  function  the  purpose  of  indicating  to  buyers  the  association 
of  merchandise  with  a  particular  manufacturer  or  dealer. 

The  present  Federal  Trade-Mark  law  went  into  effect  on 
April  i,  1905. 

The  reader  should  understand  clearly  that  the  right  to  own 
a  trade-mark  is  not  a  creation  of  the  statute,  for  the  use  of 
trade-marks,  and  the  recognized  right  of  manufacturers  to  be 
protected  in  their  use,  far  antedate  any  specific  trade-mark 
legislation. 

7 


8 


Trade-Marks. 


The  intent  of  the  statute  is  to  systematize  and  codify  trade- 
mark practice.     It  provides  a  definite  procedure  for 
The  Act   of    the  registration  of  trade-marks;  lays  down  rules  for 
validity  in  marks;  puts  trade-mark  litigation,  when 
registered  trade-marks  are  the  subject  matter  of  the  litigation, 
within  the  jurisdiction  of  the  Federal  Courts;    and  makes  every 
trade-mark  registered  under  the  law  a  part  of  the  public  records 
of  the  nation.      But  a  trade-mark  may  be  legally  sound  even  if 
not  registered,  just  as  a  person  may  own  real  estate  without 
recording  the  title. 

The  ownership  of  trade-marks,  like  any  other  property  right, 
is  recognized  by  the  common  law.  The  Supreme 
Court  of  the  United  States  has  said:  "The  right 
to  adopt  and  use  a  symbol  or  device  to  distinguish 
the  goods  or  property  made  or  sold  by  the 
person  whose  mark  it  is,  to  the  exclusion  of  use 
by  all  other  persons,  has  been  long  recognized 
by  the  common  law  and  the  chancery  courts 
of  England  and  of  this  country.  It  is  a  property 
right  for  the  violation  of  which  damages  may 
be  recovered  in  an  action  at  law,  and  the 
continued  violation  of  it  will  be  enjoined  by 
a  court  of  equity  with  compensation  for  past 
infringements." 

Trade-marks,    under    the    Act    of    1905,    are 
registered  in  the  United  States  Patent  Office. 

In  case  of  litigation  resulting  over  the  right 
to  use  any  trade-mark,  evidence  of  the  registration  of  the  mark 
by  one  of  the  litigants  puts  the  burden  of  proof  upon  the  other. 
In  other  words,  the  user  of  the  unregistered  trade-mark  must 
prove  priority  of  use  and  ownership.  This  is  often  a  very  difficult 
thing  to  do,  especially  in  the  case  of  trade-marks  that  have  been 
used  a  long  time,  for  such  proof  must  necessarily  rest  upon  the 
production  of  old  labels,  packages  of  the  goods  with  the  trade- 
mark affixed,  and  the  testimony  of  witnesses. 

The  owner  of  a  registered  trade-mark  does  not  need  any 
evidence  other  than  the  public  records  of  the  Patent  Office  to 
establish  the  date  of  his  first  use  of  the  mark. 

When  a  trade-mark  is  not  registered  in  the  Patent  Office, 
litigation  concerning  it  does  not  come  under  the  jurisdiction  of 
the  Federal  courts,  unless  the  opposing  parties  are  citizens  of 
different  states. 

On  the  other  hand,  all  cases  pertaining  to  registered  trade- 
marks fall  within  the  field  of  Federal  jurisdiction,  irrespective  of 
the  amount  in  dispute  or  the  place  of  residence  of  the  parties. 
There  is  an  obvious  advantage  in  this,  owing  to  the  fact  that  an 
injunction  secured  in  one  Federal  Court  will  be  enforced  in  all 
such  courts  in  any  state. 

The  fee  charged  by  the  Patent  Office,  under  the  law,  for 
registering  a  trade-mark  is  ten  dollars.  This  does  not  include 
the  attorney's  fee,  which  must  be  paid  by  the  applicant. 


THE  POM- 
PEIAN  WINDOW 
SCREEN  TRADE- 
MARK. 


Trade-Names. 


A  certificate  of  registration  remains  in  force  for  twenty 
years,  and  it  may  be  renewed,  upon  expiration,  for  like  periods 
of  twenty  years,  upon  payment  of  a  renewal  fee  of  ten  dollars. 

An  individual  or  corporation 
has  a  right  to  register  a  trade- 
mark under  the  United  States  law 
if  the  trade-mark  for  which  regis- 
tration is  sought  belongs  to  the 
applicant  and  is  used  by  him : 


i  st.       In    commerce    among 


REG  U.S.  PAT.  OFF. 


the  several  states: 
and.      Or,  in  commerce  with          ^      CELEBRATED      UNDERWEAR 
foreign  nations;  "0^3 M" POROUS "Tra   "KNIT." 

^rd.      Or,  in  commerce  with     THis    MARK    SEEMS    ALMOST    DE- 
the  Indian  tribes:          SCRIPTIVE,     BUT     IT     DOES     NOT 
"DESCRIBE   THE   GOODS.       IT   DE- 

provided  the  owner  of  the  trade-     SCRIBES   THE   KNITTIN 
mark  resides  within  the  territory     c 

of  the  United  States  (which  includes  all  territory  under  United 
States  control),  or  has  a  business  establishment  situated  in 
United  States  territory,  or  resides  in  any  foreign  country 
which  affords,  by  treaty,  similar  privileges  to  citizens  of  the 
United  States. 

Divested  of  legal  verbiage,  the  main  provisions  of  the  Act, 
so  far  as  the  features  governing  registration  are  concerned,  may 
be  stated  as  follows: 

A  trade-mark  A  design  or  wording  identical  with  a  registered  or  known 

is     not    regi«-  trade-mark  owned  and  in  use  by  another,  and  appropriated 

treble  if  it  is:   to  merchandise  of  the  same  descriptive  qualities,  or  which 

so   nearly   resembles   a   registered   or   known   trade-mark 

owned  and  used  by  another,  and  appropriated  to  merchandise  of 

the  same  descriptive  qualities,  as  to  deceive  purchasers,  or  to  be 

likely  to  cause  confusion  in  the  mind  of  the  public. 

The  insignia  of  the  American  National  Red  Cross  Society. 
,  •    The  flag  or  coat  of  arms  of  any  foreign  nation. 

Any  design  or  picture  which  has  been  adopted  by  a  fraternal 
society  as  its  emblem. 

A  portrait  of  a  living  individual  unless  the  application  for  registra- 
tion is  accompanied  by  the  written  consent  of  the  individual  whose 
portrait  is  used. 

Scandalous  or  immoral  matter  of  any  description. 

The  flag,  or  coat  of  arms,  of  the  United  States,  or  of  any  state,  or  of 
any  municipality,  or  any  of  the  insignia  thereof. 

Any  geographical  name  or  term. 

A  misrepresentation  of  the  quality,  composition,  character,  origin, 
or  nature  of  the  commodity  with  which  it  is  used. 

Any  mark  which  consists  merely  in  the  name  of  an  individual, 
firm,  corporation,  or  association,  unless  said  name  is  written, 
printed,  impressed  or  woven  in  some  particular  or  distinctive 
manner,  or  is  used  in  connection  with  a  portrait  of  the  individual. 


10  Trade-Marks. 


Any  arrangement  of  words  or  devices  descriptive  of  the  goods  with 
which  they  are  used,  or  of  the  character  or  quality  of  such  goods. 
In  other  words,  a  trade-mark  must  not  be  an  advertisement  in  the 
ordinary  sense  of  the  word. 

»  »,-j_  .....it  Unlike  any  other  trade-mark,  already  in  use,  and  applied 

is  reeistrable  to  the  same  class  of  goods.      It  must  not  resemble  the 

if  it  is  •  trade-mark  of  a  competitor,  or  of  a  potential  competitor, 

to  such  an  extent  that  the  buying  public  is  likely  to  be 

deceived  or  confused  by  the  resemblance. 

The  business  name  of  a  person  or  firm  vhen  written,  printed,  im- 
pressed or  woven  in  some  distinctive  manner,  or  in  association  with 
a  portrait,  or  in  an  autographic  form. 

Any  trade-mark  which  has  been  in  continuous  and  exclusive  use 
by  the  applicant  since  February  21,  1895. 

An  arbitrary  symbol,  or  word,  or  words,  or  a  combination  of  a 
device  and  wording,  not  obviously  descriptive  of  the  commodity 
to  which  it  is  to  be  applied. 

Used  in  lawful  trade. 

Of  such  a  character  that  it  may  be  affixed,  printed  upon,  woven, 
sewed,  branded  or  otherwise  impressed  upon  the  product  with 
which  it  is  used,  or  upon  the  package  or  container  of  the  product. 

The  right  to  register  trade-marks  is  limited  to  individuals 
and  corporations. 

Under  the  United  States  law  an  association  cannot  possess 
Association  a  trade-mark,  as  exclusive  ownership  and  specific 
trade-mark*  origin  are  essential  attributes  of  validity. 

The  letters  "A-A.  L,"  meaning  Anti- Adulteration  League, 
were  refused  registration  as  a  trade-mark  for  flour  on  the  ground 
that  the  mark  did  not  represent  origin,  but  membership  in  an 
association.  The  applicant  was  a  voluntary  association  of  flour 
manufacturers.  It  was  held  that  an  association  cannot  be  the 
"owner"  of  a  trade-mark  within  the  meaning  of  the  statute. 

Some  states  have  enacted  laws  prohibiting  the  unauthorized 
use  of  the  labels  of  trade-unions  and  similar  associations.  These 
laws  are  not  trade-mark  statutes.  They  are  based  on  the 
broader  principle  of  unfair  business  competition. 

It  is  the  general  opinion,  we  believe,  of  trade-mark  authorities 
that  the  lack  of  provision  in  our  law  for 
association  trade-marks  is  a  defect  that 
should  be  remedied  as  soon  as  possible.  It 
is  a  noteworthy  fact  that  most  of  the  other 
great  nations  recognize  association  marks. 

An  interesting  example  of  an  associa- 
tion trade-mark  is  that  of  the   Irish   In- 
dustrial    Development     Association     (re- 
produced on  this  page).     This  association 
has  a  membership  of  about  five  hundred 
Irish    manufacturers.     Its    use    indicates 
THE  IRISH  NATIONAL  that  the  merchandise  to  which  it  is  affixed 
is  of  Irish  manufacture;    in  other  words, 
it  is  indicative  of  geographical  origin.     The  Irish  trade-mark 


Trade-Names.  11 


has  been  registered  in  Great  Britain  under  the  British  Trade- 
Mark  Act  of  1905. 

An  American  by  the  name  of  D.  B. 
Barrett  attempted  to  register  this  mark  in 
the  United  States  Patent  Office  under  his 
own  name.  This  fact  came  to  the  atten- 
tion of  the  Irish  Industrial  Development 
Association,  and  some  correspondence  re- 
lating to  the  matter  passed  between  Mr. 
John  Redmond,  the  leader  of  the  Irish 
National  party  in  Parliament,  and  President  THE  OMAHA  TRADE- 
Taft.  As  the  law  now  stands  this  Irish  CHOSEN  FROI^  764  VDE- 
trade-mark  cannot  obtain  in  the  United  SKINS  SUBMITTED.  THE 
States  the  protection  that  registration  DESIGNER  RECEIVED  A 
might  give.  MRAREK  °WILL  'BE  ™E* 

Within  the  last  few  years  several  PRODUCED  ON  ALL 
American  communities  have  adopted  trade-  STATIONERY  OP  OMAHA 
marks,  or  labels.  The  Omaha  trade-mark  WU^^'B'E™  AFFIXED"* 'TO 
is  reproduced  here  as  an  example  of  this  ALL  OMAHA-MADE 
class  of  marks. 

There  is  a  genuine  need  for  an  amendment  to  the  law  that 
would  give  this  class  of  marks  the  right  of  registration. 

A  provision  of  the  Act  of  1905  legalized  all  trade-marks  that 
had  been  in  exclusive  use  by  the  applicant  for  ten 
years  prior  to  the  passage  of  the  act,  and  this  pro- 
vision applies  even  to  trade-marks  of  ten  years' 
standing  that,  because  of  their  character,  could  not  be  registered 
under  the  act.  The  wording  of  the  act  dealing  with  this  subject 
is  as  follows: 

"Nothing  herein  shall  prevent  the  registration  of  any  mark 
used  by  the  applicant  or  his  predecessors, 
or  by  those  from  whom  title  to  the    trade- 
mark is  derived,  in  commerce  with  foreign 
nations   or   among   the   several   states,    or 
with  the  Indian  tribes,  which  was  in  actual 
and  exclusive  use  as  a  trade-mark  of  the 
applicant  or  his  predecessors  from  whom 
he   derived   title   for  ten   years   next  pre-      TBREDUNDERTOE^N- 
ceding  the  passage  of  this  act."  YEARS'  CLAUSE. 

A  manufacturer  cannot  register  a  trade-mark  and  file  it  away 
with  the  intention  of  using  it  at  some  future  time.  A  condition 
of  validity  is  that  the  mark  must  not  only  belong  to  the  applicant, 
but  must  be  "used  by  him  in  lawful  trade."  An  intention  to  use 
a  mark  is  not  sufficient.  The  use  in  trade  must  antedate  the 
application  for  registration.  The  letter  of  the  law  is  complied 
with  if  a  single  package  of  the  goods  with  the  trade-mark  affixed 
is  sold  in  interstate  or  foreign  commerce. 

Those  who  intend  to  adopt  trade-marks  should 
Clarification    keep  in  mind  that  the  use  of  a  trade-mark  is  limited 
'•    strictly  to  one  class  of  merchandise,  which  must  be 
the  class  for  which  it  has  been  registered. 


Coward 
Stoe 


1.2 


Trade-Marks. 


all 


For  purposes  of  classification  the  Patent  Office  has  separated 
merchandise  into  forty  -nine  general  classes,  as  follows: 


I. 

Raw    or    partly    prepared    ma- 

24. 

terials. 

25. 

2. 

Receptacles. 

3- 

Baggage,  horse  equipments,  port- 
folios, and  pocketbooks. 

26. 
27. 

4- 

Abrasive,  detergent,  and  polish- 

*l. 

ing  materials. 

29. 

5- 

Adhesives. 

6. 

Chemicals,   medicines 

30 

and    pharmaceutical   prepara- 

3i- 

tions. 

32. 

7. 
8. 

Cordage. 
Smokers'   articles,  not  including 

33- 

tobacco  products. 

9- 

Explosives,  firearms,  equipments, 

34- 

and  projectiles. 

0. 

Fertilizers. 

3^ 

Inks  and  inking  materials. 

36- 

2. 

Construction  materials. 

37- 

3. 

Hardware     and     plumbing    and 

38. 

4- 

steam-fitting  supplies. 
Metals    and   metal  castings   and 

39- 

forgings. 

40. 

r 

Oils  and  greases. 

41. 

f, 

Paints  and  painters'  materials. 

7. 

Tobacco  products. 

42. 

8. 

Vehicles,  not  including  engines. 

43- 

9. 

Linoleum  and  oiled  cloth. 

0. 

Electrical    apparatus,    machines, 

44- 

and  supplies 

45- 

I. 

2. 

Games,  toys,  and  sporting  goods. 
Cutlery,    machinery,    and    tools, 

46. 
47- 

and  parts  thereof. 
Laundry     appliances    and    ma- 
chines. 


Locks  and  safes. 

Measuring     and     scientific     ap- 

pliances. 

Horological  instruments. 
Jewelry  and  precious-metal  ware. 
Brooms,  brushes,  and  dusters. 
Crockery,     earthenware,     and 

porcelain. 

Filters  and  refrigerators. 
Furniture  and  upholstery. 
Glassware. 
Heating,  lighting,  and  ventilating 

apparatus,     not    including 

electrical  apparatus. 
Belting,   hose,    machinery   pack- 

ing, and  non-metallic  tires. 
Musical  instruments  and  supplies. 
Paper  and  stationery. 
Prints  and  publications. 
Clothing. 
Fancy    goods,    furnishings,    and 

notions. 

Canes,   parasols,   and   umbrellas. 
Knitted,     netted,     and     textile 

fabrics. 

Thread  and  yarn. 
Dental,     medical,     and    surgical 

appliances. 

Beverages,  non-alcoholic. 
Foods  and  ingredients  of  foods. 
Wines. 

Malt  extracts  and  liquors. 
Distilled  alcoholic  liquors. 
Merchandise  not  otherwise 

classified. 


(Note:  Class  18  was  abolished  Feb.  24,  1909.) 

An  applicant  for  registration  must  specify  not  only  the  general 
class  of  merchandise  in  connection  with  which  he  intends  to  use 
his  trade-mark,  but  must  state  also  specifically  the  articles  in 
that  class  upon  which  he  has  used  the  trade-mark  he  seeks  to 
register. 

For  instance,  a  manufacturer  who  might  apply  for  the  registra- 
tion of  "Pendennis,"  as  a  trade-mark  for  smok- 
ing tobacco  —  to  select  a  word  at  random  —  would 
find  that  it  would  not  be  satisfactory  to  the 
Patent  Office  to  state  in  his  application  that  the 
mark  was  being  used  in  connection  with  Class  1  7 
•  —  "Tobacco  products."  He  would  be  required 
J  to  state  that  his  mark  was  being  used  on  "smok- 
*  ing  tobacco."  After  registration  had  been 
granted  the  Patent  Office  would  not  register 
another  "Pendennis"  trade-mark  in  that  class 
of  merchandise,  to  be  used  on  cigars,  for  instance, 
for  another  applicant.  Nor  would  the  first 
registrant  be  obliged  to  apply  for  a  new  registra- 
tion if  he  should  desire  to  extend  the  use  of  his 
trade-mark  to  cigars,  or  chewing  tobacco,  or  any 


ELECTRIC  COM- 
PANY. AN  EX- 
CELLENT USE  OF 
INITIALS  AS  A 
TRADE-MARK. 


Trade-Names.  13 


other  tobacco  product.  The  law  would  protect  him  in  the  use 
of  the  mark  for  all  articles  of  that  class,  but  the  rules  of  the  Patent 
Office  require  applicants  to  give  full  particulars  not  only  as  to 
class  of  merchandise,  but  the  specific  articles  on  which  the  mark 
has  been  used. 

A  result  of  the  principle  of  trade-mark  practice  which  limits 
the  use  of  a  mark  to  one  class  of  merchandise  is  to  be  seen  in  the 
same  name  being  used  as  a  registered  mark  for  unrelated  articles. 

The  name  "Pompeian, "  for  instance,  is  used  as  a  trade-mark 
for  a  face  cream  and  also  for  wire  netting  for  window  screens; 
' '  Republic ' '  is  used  for  automobile  tires  as  well  as  several  other 
articles  in  different  classes;  "Packard"  for  pianos  and  auto- 
mobiles ;  and  there  is  an  "  Ideal ' '  hair-brush  and  an  ' '  Ideal ' ' 
fountain  pen. 

The  law  directs  that  the  owner  of  a  registered  trade-mark 

affix,  print  or  impress  upon  such  trade- 
Registration  mark  wherever  it  is  used,  or  in  close 
involves  obli-  enough  proximity  to  it  to  be  easily  seen, 
partoTthl  the  words,  "  Registered  in  U.  S.  Patent 
registrant  Office,"  or  the  shorter  abbreviated  form, 

viz.,  "  Reg.  U.  S.  Pat.  Off. "  The  trade- 
mark of  Baker's  Cocoa — the  Baker  chocolate  girl — 
reproduced  on  this  page,  shows  how  this  should  be 
done. 

If  this  notification  is  not  used  in  connection  with 
the  trade-mark,  the  owner  of  the  mark,  in  infringe- 
ment proceedings  against  an  unauthorized  user, 
cannot  collect  damages  unless  he  can  prove  that  he 
gave  the  other  party  formal  notice,  and  that  the 
unauthorized  use  of  the  mark  was  continued  after 
notice. 

A  trade-mark  is  not  merely  an  advertising  symbol.  It  is  an 
.„.  essential  of  trade-mark  validity  that  the  mark  be 

affixed  to  the  goods.  A  device,  or  word,  or  phrase, 
or  picture  that  is  used  only  in  circulars,  advertisements,  or  on 
signs  or  letter-heads  is  not  a  trade-mark  and  cannot  be  pro- 
tected under  the  trade-mark  laws.  (It  should  be  stated  here 
that  the  unauthorized  use  of  one  other  than  the  owner  of  such  a 
device  or  wording  may  sometimes  be  prosecuted  under  the  com- 
mon law — the  law  of  unfair  business  competition.) 

A  trade-mark  may  be  printed,  pasted,  written,  stamped, 
stenciled,  branded,  sewed,  or  woven  upon  the  article  with  which 
it  is  used.  In  cases  where  it  is  not  practicable  to  affix  the  mark 
upon  the  merchandise  itself  it  must  be  affixed  to  the  container. 

Rules  of  the  Patent  Office 

We  have  not  the  space  here  to  go  into  a  detailed  description 
of  the  procedure  of  the  Patent  Office  in  considering  trade-mark 
applications.  This  procedure,  especially  in  cases  where  there  is 
some  doubt  as  to  the  validity  of  the  mark,  is  highly  complicated, 


14 


Trade-Marks. 


and  can  be  followed  successfully  only  by  an  attorney  experienced 
in  trade-mark  practice. 

The  rules  of  the  Patent  Office  require  applications  for  registra- 
tion of  trade-marks  to  be  made  in  a  certain  conventional  form. 
A  drawing  of  the  mark,  of  a  certain  specified  size,  must  be  sub- 
mitted with  the  application.  Proofs  of  the  mark,  as  actually 
used,  must  also  be  forwarded  as  exhibits  in  the  case. 

If,    on   preliminary   examination,    the   mark   appears   to   be 
entitled  to  registration,  a  reproduction  of  it  is  printed  at  least 
once  in  the  Official  Gazette  of  the  Patent  Office.     This  publica- 
tion must  be  at  least  thirty  days  prior  to  the  date  of  registration. 
The  purpose  of  the  publication  of  the  mark  in  the  Official 
Gazette    is    to    allow    opposition 
from    any    one    who    thinks    its 
registration    would    conflict    with 
his  rights.      Opposing  an  applica- 
tion is  technically  called  an  "op- 
position."    An  opposition  serves 
to    delay    registration    until    the 
examiner     in     charge     of     inter- 
ferences   considers    the    evidence 
submitted. 

Under  certain  conditions,  re- 
jected applications  may,  on  appeal, 
be  taken  up  to  the  Commissioner 
of  Patents. 

The  number  of  rejected  ap- 
plications is  very  large.  Under 
the  law  of  1905,  the  total  number 
of  applications  up  to  May,  1912, 
was  62,500. 

The  total  number  of  registrations  under  the  law  is  around 
42,000.     This  means  that  more  than  20,000  applica- 
Number  of       tions  have  been  rejected  in  seven  years.      In  other 
Applications    words,  about  two  out  of  every  three  applications 
pass  the  gauntlet  of   Patent   Office  scrutiny,  inter- 
ference and  opposition,  and  are  registered. 

Many  of  the  defective  applications  fail  because  of  a  lack  of 
competent  advice  in  devising  the  proposed  trade-marks,  as  well 
as  because  of  inexperience  in  prosecuting  the  applications. 


CHAPTER  III 
Analysis  of  the  Requirements  for  Registration 

IN  the  preceding  chapter  we  traced  an  outline  of  the  main 
provisions  of  the  Act  of   1905  —  the  Trade-Mark  Law.      We 
intend  to  take  up  in  this  chapter  each  clause  of  the  law  ap- 
plying to  registration,  and  show  how  it  works  in  actual  practice. 
Great  care  should  be  taken  by  an  applicant  for  registration 
A  trade-mark    °f  a  trade-mark,  or  his  attorney,  to  avoid  conflict 
will    not    be    with   a   trade-mark   that   is    already   registered   or 
registered  if    already  in  use  (even  if  not  registered)  ,  provided  that 
In  designer    lt  is  applied  to  the  same  class  of  merchandise  as  that 
wording  with    of  the  applicant.      Lack  of  caution  in  this  respect 
a    known    has  caused  interminable  annoyance  and  litigation, 
ady'Tn    with  consequent  financial  loss. 
byan-  In  considering  the  question  of  conflicting  marks, 


other    and    the  Patent  Office  and  the  Federal  courts  hold  that 
good*'  of  the    the   test   of   similarity    is    whether   the   marks    are 


m  e     d  e  -    sufficiently  alike  in  appearance  or  wording,  or  sound, 
»  c  r  i  p  t  i  r  e    to  mislead  the  average  individual. 
itreiembiesa  The  word  "Autola"  as  a  trade-mark  for  cigars 

known  trade-  was  held  not  registrable  owing  to  a  prior  registra- 
marksoclose-  ^ion  of  the  word  "Auto-do"  for  the  same  class  of 
merchandise.  In  this  instance,  registration  was 
refused  on  the  basis  of  resemblance  in  sound  as  well 
as  in  appearance. 

"Lady  Lee"  having  been  registered  as  a  trade-mark  for  shoes, 
"Lady  Like"  was  refused  registration  in 

the  same  class.  c^  NJ  I  I  r~  "T*  IT  V 

•  "Certosa"    as   a  mark  for   a  brand   of     ^  IN  U  O    I   L  A 

flour  sufficiently   resembled   "Ceresota"  —         ONE     OF    THE    IN_ 

already  registered  —  to  cause  its  rejection.      NUMERABLE  WORDS 

"Powellton"    failed    registration    as    a      *N°'NMPARTKN   "™* 
trade-mark   for  coal,   on  the  ground   that      BEL?S 
another  company's  coal  already  bore  the 
registered  mark  "Powell's  Run." 

"Sodafoam"  was  considered  close  enough  in  resemblance  to 
"Sea  Foam"  (already  registered  in  the  same  class)  to  cause  its 
rejection. 

"  Uno  "  having  been  registered  as  a  trade-mark  for  a  medicine, 
an  application  for  the  registration  of  "Ino"  in  the  same  class 
was  refused. 

Registration  is  refused  a  trade-mark  when  it  consists  of 
words  describing  a  symbolic  or  pictorial  device  which  has  already 
been  registered;  or  vice  versa,  when  the  wording  has  been 
registered  first,  registration  for  the  symbol  is  refused.  For 

15 


16  Trade-Marks. 


instance,  the  Patent  Office  has  held  that  a  trade-mark  consisting 
of  a  conventional  representation  of  a  bouquet  of  flowers  is 
identical  in  meaning  with  another  mark  consisting  of  the  word 
"Bouquet,"  applied  to  the  same  class  of  merchandise.  In  either 
case,  the  goods  would  be  called  "Bouquet  Brand." 

Agreement  among  owners  of  conflicting  marks  is  not  recog- 
nized by  the  Patent  Office.  An  interest- 
ing example  of  this  occurred  in  the 
attemp  t  to  register  the  word  "  N  ay  asse  tt . " 
The  word  "Nassac"  had  already  been 
registered  for  the  same  class  of  goods 
and  the  registration  of  "Nayassett"  was 
refused  on  the  ground  of  similarity. 
Soon  afterward,  the  owner  of  the 
*'  Nayassett"  mark  made  a  new  applica- 
CRYSTAL  DOMINO  SUGAR,  tion,  accompanied  by  the  formal  con- 
NOTE  THAT  THE  REGisTRA- sent  of  ^e  owners  of  the  "Nassac" 
RIE°sEN?rTioNPIoCFTOARIDo.NnKo"mark-  The  Commissioner  of  Patents 
OR  MASK,  INCLUDES  THE  held  that  the  law  did  not  provide  for 
EXCLUSIVE  USE  OF  THE  agreement  between  owners  of  con- 
flicting marks,  and  the  registration  of 
"Nayassett"  was  refused  accordingly. 

About  two  years  ago  a  manufacturer  in  a  Middle  Western 
city  became  interested  in  a  new  metal  polish  and  decided  to  put 
it  on  the  market.  After  long  consultation  with  advertising  men 
and  salesmen,  a  name  was  selected.  This  name  was  suggestive 
and  short,  with  a  snap  to  it,  that  made  it  stand  out  in  the 
memory.  Many  thousands  of  labels  were  ordered  and  packages 
of  the  article  were  given  to  the  traveling  salesmen  of  the  concern 
to  be  used  in  getting  orders  from  retailers.  Booklets  and 
literature  had  been  written  and  mailed,  and  the  business  was 
beginning  to  take  shape,  when,  to  the  surprise  of  the  manu- 
facturer and  his  associates,  his  application  for  trade-mark 
registration  was  rejected  by  the  Patent  Office  for  the  reason  that 
the  mark  had  already  been  registered.  Then  followed  a  hasty 
trip  to  a  trade-mark  attorney  and  a  search  of  the  Patent  Office 
records  was  made.  Investigation  of  the  register  showed  that 
the  same  name  had  been  registered  by  an  Eastern  concern  for 
a  metal  polish  some  years  ago.  About  this  time  a  letter  arrived 
from  the  attorney  of  the  Eastern  firm,  with  a  statement  to  the 
effect  that  the  owner  of  the  trade-mark  considered  this  un- 
authorized use  of  the  mark  an  infringement  and  intended  to  take 
legal  action  in  the  matter.  A  month  or  two  was  spent  in  trying 
to  make  some  arrangement  with  the  Eastern  concern,  with  the 
final  result  that  the  trade-mark  had  to  be  dropped,  and  some- 
thing new  devised. 

In  this  case  a  full  year  was  lost,  and  a  considerable  amount  of 
money  was  wasted,  by  reason  of  the  failure  of  this  manufacturer 
to  have  a  search  made  of  the  Patent  Office  records.  He  made 
the  mistake  of  considering  the  matter  of  trade-mark  registration  a 
small  detail,  and  trying  to  attend  to  it  himself.  A  competent  at- 
torney would  have  saved  his  fee  a  thousand  times  over  in  this  case. 


Trade-Names.  17 


This  prohibition  is  not  covered  by  the  trade-mark  law,  but 
is  one  of  the  provisions  of  the  Act  of  Congress  in- 
A trade-mark  corporating    the    American    National     Red    Cross 
consisting  of  (approved  Jan.  5,  1905).     The  act  of  incorporation 
of  the'Tmer*  states  that  it  shall  not  be  lawful  for  any  person  or 
ican  National  corporation  to  use  in  trade,  or  for  purpose  of  ad- 
Red  Cross  is  yertisement,  "the  sign  of  the  Red  Cross"  or  "any 
fa-able'68  '*"  insignia  colored  in  imitation  thereof,"   unless  such 
person  or  corporation  was  entitled  to  the  use  of  such 
insignia  at  the  time  of  the  passage  of  the  act. 

This  exception,  which  was  intended 
to  safeguard  the  interests  of  those  who 
had  long  used  the  Red  Cross  sign  as  a 
trade-mark,  covers  the  Red  Cross  mark 
of  the  well  known  druggists'  specialty 
house  of  Johnson  &  Johnson,  the  Red  ANOTHER  EXAMPLE  OP  A 
Cross  labels  used  on  a  brand  of  shoes  ™£?E;"A *K  COINED'  '  WORD 
made  by  Krohn,  Fechheimer&  Company  MADE  FROM  "TEXAS"  AND 
of  Cincinnati,  the  Red  Cross  mattress  "COMPANY." 
manufactured  by  a  Boston  concern,  and  a  few  other  users  of 
this  device. 

The  law,  as  it  stands,  is  rigidly  enforced  in  regard  to  all  new 
trade-marks  containing  Red  Cross  devices. 

An  unusual  argument  was  made  the  basis  of  an  application 
for  registration  of  a  label  for  a  cough  syrup,  on  which  the  emblem 
of  the  Red  Cross  was  printed,  accompanied  by  the  words  "  Red 
Cross."  When  registration  was  refused,  the  applicant  sought 
to  amend  the  label  by  striking  out  the  Red  Cross  emblem,  while 
leaving  the  words  intact.  He  argued  that  the  Red  Cross  in- 
corporation act  prohibited  only  the  use  of  the  "sign  of  the  Red 
Cross"  and  not  the  words.  The  application  was  rejected  on 
the  ground  that  it  was  an  attempt  to  evade  the  spirit  of  the  law. 
A  trade-mark  is  essentially  an  exclusive  possession.  When 
it  ceases  to  be  exclusive,  it  ceases  to  be  a  trade- 
Trade- marks  mark,  in  the  true  sense.  It  is  apparent,  therefore, 
serf  tfve  dof  that  an  ordinary  word,  descriptive  of  the  goods  with 
the  goods  which  it  is  used,  cannot  be  set  aside  as  the  exclusive 
with  which  property  of  any  manufacturer,  to  the  detriment  of 
se*/  o*  "of  °tners  producing  merchandise  of  the  same  character. 
thVqualtty  or  The  wording  of  the  law  on  this  point  is  clear,  and 
character  of  the  Patent  Office  is  strict  in  its  interpretation.  But 
are'notVe^iV  despite  this  condition,  many  applications,  destined 
trabTe*  *  "~  to  be  rejected,  are  made  every  year  for  the  registra- 
tion of  descriptive  marks.  We  give  here  a  few 
examples  of  trade-marks,  refused  registration  on  the  ground  of 
being  descriptive. 

The  word  "Kantleek"  was  refused  registration  as  a  trade- 
mark for  a  hot-water  bag.  The  Patent  Office  examiner  held 
that  the  word  was  composed  of  "Can't"  (misspelled  "Kant") 
and  "Leak"  (misspelled  "Leek"),  and  that  it  was  intended  to 
convey  the  idea  that  this  particular  bottle  could  not  leak.  The 


18  Trade-Marks, 


HUJEROID 


attorney  for  the  applicant  presented  an  argument  to  the  effect 
that  the  word  was  composed  of  two  German  words,  "Kant" 
and  "Leek,"  that  had  meanings 
quite  different  from  the  English 
words  with  the  same  sound.  This 
contention  was  too  subtle  for  the 
Patent  Office  to  grasp,  and  regis- 

ALTHOUGH  THIS  MARK  HAS  BEEN    ****•£?   WaS    refused 

REGISTERED    IT    HAS    BEEN    OB-          i  he  word     Naphtha,    used  as 
GLARED  A  DESCRIPTIVE  WORD  BY  A  a  name  for  a  soap  with  naphtha 
*s  an  ingredient,  was  held  to  be 
descnptive,     and     therefore     not 
registrable  as  a  trade-mark,  to   the  exclusion   of  the   goods  of 
other    manufacturers,    although   the    owner    had   advertised  it 
extensively. 

"Mello"  as  a  mark  for  chewing-gum  was  considered  descrip- 
tive, being  simply  a  misspelling  of  the  word  "mellow." 

Many  applicants  for  trade-mark  registration  seem  to  think 
that  the  mere  misspelling  of  a  descriptive  word,  or  some  fanciful 
device  in  lettering,  will  remove  the  word  from  the  descriptive 
class.  This  is  a  belief  that  has  no  basis  in  fact,  for  no  matter 
how  a  word  is  spelled  or  lettered,  it  is  descriptive  if  it  conveys 
information  of  a  descriptive  character. 

For  instance,   the  word   "  Bestok"   was    rejected  as  a  mis- 


spelling of  "Best  Stock";  "Unxld"  as  a  misspelling  of  "Un- 
excelled " ;  "  Kid  Nee  Kure  "  as  a  misspelling  of  "  Kidney  Cure  " ; 
and  "Pittsburgh  Pump,"  printed  with  hyphens  between  the 
letters— P-I-T-T-S-B-U-R-G-H  P-U-M-P— was  refused  registra- 
tion as  being  both  descriptive  and  geographical. 

The  courts  have  held  that  the  word  "  Elastic,"  used  to  desig- 
nate drawers  having  an  elastic  seam, 
is  descriptive,  but  the  same  word  is 
used  in  a  fanciful  sense  and  is  valid  as 
a  trade-mark  when  applied  to  sectional 
bookcases. 

A  manufacturer  of  hooks  and  eyes 
applied   for   registration   of   the   phrase 
THE  CmJsHpEL'LiNGADoFMArRHKE  "  Rust ?     Never!"     as     a     trade-mark. 
PHRASE    "YOUNG    FELLOW"  Registration  was  refused,  as  the  mark 
T.s  was  held  to  be  descriptive,   indicating 
iTsLTEliGiBiLiTYTRFo^tE  'REGIS-  that  the  hooks  and  eyes  would  never 

TRATION   WOULD   BE   THE  TUSt. 

Arbitrary    numbers    are    obviously 

ORDINARY  TYPE  registrable     as    trade-marks,     but    the 

applicant  must  be  prepared  to  establish 

his  contention  that  the  numbers  are  really  arbitrary  and  meaning- 
less. In  certain  trades  numbers  are  used  to  designate  grades  of 
a  product  common  to  the  trade,  and,  in  that  case,  the  grade 
numbers  are  descriptive  by  common  usage.  A  plow  manufacturer 
applied  for  registration  of  the  symbols  "A  No.  i,"  "No.  i "  and 
"AX  No.  i,  as  trade-marks  for  plows.  It  was  shown,  upon 


Trade-Names.  19 


examination,  that  these  symbols  are  used  by  many  plow  makers 
to  designate  grades,  and  they  were,  therefore,  ordinary  descrip- 
tive trade  terms.  Registration  was  refused. 

The  prohibition  against  trade-marks  descriptive  of  the 
character  or  quality  of  the  product  applies  with  equal  force  to 
trade-marks  descriptive  of  the  container  or  package.  A  flour 
manufacturer  put  up  his  product  in  barrels  of  a  distinctive 
character — white  and  dark  staves  alternating.  He  applied  for 
registration  of  a  mark  consisting  of  a  pictorial  representation  of 
the  striped  barrel.  This  mark  was  considered  descriptive,  and 
registration  was  refused. 

A  Philadelphia  candy  manufacturer  applied  for  registration  of 
the  word  "Fussy,"  as  used  in  the  phrase  "A  fussy  package  for 
fastidious  folk."  The  Patent  Office  held  that  the  word  "fussy," 
as  used  in  the  phrase,  was  merely  a  descriptive  term — an 
adjective  qualifying  "package" — and  registration  was  accord- 
ingly refused. 

The  word  "Spearmint,"  being  a  descriptive  word,  was  re- 
fused registration  as  a  trade-mark  for  Wrigley's  Spearmint 
chewing  gum,  but  the  representation  of  a  spear  was  considered 
registrable. 

Various  applicants  have  sought  registration  for  trade-marks 
that,  while  they  are  meaningless  to  English-speaking  people,  are 

'ly  descriptive  terms   take 


really  descriptive  terms  taken  from  foreign  languages.  Such 
words  are  not  registrable,  for  the  Patent  Office  makes  no  dis- 
tinction between  languages. 

The  phrase  "Lait  de  Violettes,"  meaning  in  French  "Milk  of 
Violets,"  was  rejected  as  a  mark  for  per- 
fumery.  iii 

"  Elegancia,  "  the  Spanish  equivalent 
of  the  English  word  "Elegant,"  was  re- 
fused registration  as  a  trade-mark  for  IT  IS  NOT  GENERALLY 

KNOWN      THAT      THIS      IS      AN 
Cigars.  ARBITRARY       WORD         REGIS- 

A  descriptive  word  in  a  language  as    TERED  AS  A  TRADE-MARK. 
little  known  as  Esperanto  is  neverthe- 
less unregistrable.      "Saniga"  means  "Sanitary"  in  Esperanto, 
and,  it  has  been  accordingly  refused  registration  on  the  ground  of 
being  a  descriptive  term. 

In  considering  the  question  of  descriptive  marks,  the  differ- 


Suggestiveness is  a  highly  desirable  quality  in  a  trade-mark,  and 


"STIIBO 


ence  between  description  and  suggestion  should  not  be  overlooked. 

lighly  desirabl 

many  excellent  and  legally  valid  marks 
are  suggestive. 

The  name  "Hydegrade,"  a  regis- 
tered trade-mark,  applied  to  a  well- 
known  fabric,  is  suggestive  of  high 
quality,  but  it  is  not  descriptive.  It  MA'RK." "ANOTHER"  EXAMPLE 
is  a  coined  word,  composed  of  the  °P  THE  LARGE  NUMBERS  OF 
elements  "Hyde"  (name  of  owner)  and  ™  'KS  CONSISTING  OF  WORDS 
"Grade." 

Another    example    of     an    excellent    suggestive     mark     is 
"Rubdry"   applied  to  towels. 


20  Trade-Marks. 


Pictorial  marks  are  often  highly  suggestive  without  being 
descriptive.  The  Baker  Chocolate  girl,  depicted  in  the  act 
of  serving  a  cup  of  cocoa,  suggests  daintiness,  taste,  beverage, 
quickness  in  serving,  and  refreshment. 

The  word  "Ideal,"  used  in  connection  with  a  fountain 
pen,  is  considered  fanciful,  and  not  descriptive.  It  would 
seem  that  a  very  fine  distinction  is  made  here,  as  this  word 
is  an  ordinary  descriptive  word,  commonly  used  to  express 
a  state  of  perfection,  as  in  the  expression  "An  ideal  day." 
It  may  be  said,  on  the  other  hand,  that  nothing  ever  reaches 
an  ideal  condition,  and,  in  that  sense,  the  mark  may  be  con- 
sidered fanciful. 

Geographical  names,  like  descriptive  terms,  are  the  common 
property  of  all  who  use  the  language.  No  one 
jcalgnarn*Por  manufacturer  can  appropriate  such  a  term  for  his 
term"*!*1*™!  own  exclusive  use  as  a  trade-mark  unless  he  uses  it 
registrable  as  in  an  arbitrary  or  fanciful  sense.  The  only  excep- 
a  trade-mark  ^jons  ^o  this  principle  are  to  be  found  in  the  case  of 
manufacturers  who  have  adopted  geographical  terms  as  their 
trade-marks  and  have  used  them  so  long,  without  opposition  or 
protest,  that  they  have  acquired  a  common  law  right  to  their 
exclusive  use. 

Among  the  geographical  marks  rejected  by  the  Patent  Office 
are  the  following: 

"Yale,"  applied  to  hosiery;  " Cloverdale,"  for  canned  fruits 
and  vegetables;  "  Red  River  Special"  as  a  mark 
for  agricultural  implements;  and  "Aurora,"  on 
shoes — the  name  "Aurora"  being  applied  to 
localities  in  at  least  twenty  states  of  the 
Union. 

It  would  seem  in  the  light  of  common-sense, 
that  in  the  last-named  case  (that  of  "Aurora") 
the  ruling  of  the  Patent  Office  is  on  a  very  narrow 
basis  indeed.  The  word  "Aurora"  has  no 
eographical  significance  to  the  average  person, 
t  calls  up  a  mental  image  of  the  dawn.  If  this 
THE  case.  and  some  others  like  it,  are  considered  valid 
USE  OP  A  sue-  precedents,  every  applicant  for  trade-mark 
GESTIVE  SYMBOL  registration  must  be  prepared  to  submit  his  ap- 
MARK  TUSEDD  IN  plication  to  the  stern  criticism  of  the  Post  Office 
CONNECTION  Directory,  with  its  catalogue  of  fifty  thousand  or 
WITH  BAY  STATE  mOre  names.  (It  is  interesting  to  observe  that, 
SENT  COATING""  in  a  later  case-  the  Patent  Office  allowed  the 
registration  of  "Aurora"  as  a  trade-mark  for  oils, 
lard,  syrup  and  honey.  Aspegren  &  Co.,  ex  parte,  100  Official 
Gazette,  684.) 

"Tabasco"  was  refused  registration  as  a  mark  for  a  sauce  on 
the  ground  that  it  is  a  geographical  term,  Tabasco  being  the 
name  of  a  state  in  Mexico. 

"French"  was  rejected  as  a  trade-mark  for  paint.  On  the 
other  hand,  "Celtic"  has  been  registered  as  a  trade-mark  for  tea 


Trade-Names.  21 


The  word  "Celtic"  has  reference  to  a  race,  of  which  the  Irish  are 
only  one  branch.  It  is  not  applied  to  any  particular  country  or 
section  of  the  globe. 

The  map  of  the  United  States  has  been  refused  registration 
as  a  trade-mark  for  sugar. 

"American  Lady"  was  refused  registration  on  the  ground 
that  the  word  "American"  is  geographical. 

When  a  geographical  term,  applied  to  merchandise,  is  used  in 
a  fanciful  or  arbitrary  sense-^that  is, 
when  it  conveys  no  deception  in  regard 
to  the  origin  of  the  merchandise — it  may 
be  registered  as  a  valid  trade-mark. 

"Dublin"  is  a  valid  trade-mark  for 
soap,  although  the  soap  is  made  in 
America.  In  the  case  concerning  this 

mark  it  was  shown  that  it  is  the  practice  ^.™.\  JGLAXD^NFECT 
of  soap  manufacturers  to  call  their  BRy  COMPANY.  THIS  i 
products  "Limerick,"  "Scotch,"  COINED  WORD,  MADE 
;•  Irish,"  etc  and  that  the  buying  public  -OM  ™.  ™.T  «™ 
is  aware  of  the  fanciful  use  of  these  CERN-S  NAME. 
names  and  is  not  deceived  thereby. 

"Vienna,"  applied  to  bread,  is  considered  valid.  No  one 
expects  bread  made  in  Vienna  to  be  sold  in  America,  consequently 
no  one  is  deceived  by  this  fanciful  use  of  the  word. 

"Gibraltar"  is  registered  as  a  trade-mark  for  belting.  It  is 
true  that  Gibraltar  is  a  geographical  name,  but  its  suggestive- 
ness  in  regard  to  belting  conveys  the  mental  picture  of  strength, 
rather  than  the  idea  of  origin. 

The  student  of  trade-mark  conditions,  having  learned  how 
rigorously  the  Patent  Office  interprets  the  section  of  the  law 
applying  to  the  registration  of  geographical  terms,  will  perhaps 
be  puzzled  by  the  number  of  trade-marks  of  this  class  which  seem 
to  be  valid  and  well-established. 

The  explanation  of  that  is  that  many  geographical  names, 
which   could  not  have  been  protected 
ab    origine    as    trade-marks,    have    ac- 
quired   a    secondary   meaning   by   long 

and  exclusive  use  by  a  particular  manu-' 

facturer.     Such  marks  fall  within  the  Bait  Rods 

protection  of  the  common  law. 

Some  of  these  common  law  marks  are       A     GEOGRAPHICAL 
registered  under  the  ten  years'   clause.    «^™EDER  THE  """ 

Among     well  -  known     geographical 

trade-marks  may  be  mentioned  "Bristol"  applied  to  fishing- 
rods;  "Kalamazoo"  applied  to  stoves;  "Manhattan,"  the  name 
of  a  brand  of  shirts;  and  "Elgin,"  "  Waltham, "  and  "  Illinois," 
the  names  of  watches. 

The  U.  S.  Sanitary  Manufacturing  Co.  was  refused  registra- 
tion for  a  trade-mark  consisting  of  the  letters  "  U.S.  "  with  a  back- 
ground of  a  shield  similar  to  that  of  the  conventional  United 
States  shield. 


22 


Trade-Marks. 


A  trade-mark 
which  con- 
sists  merely 
of  the  name 
of  an  individ- 
ual, firm  or 
corporation 
can  be  regis- 
tered only  on 
certain  con- 
ditions 


The  coat  of  arms  of  the  United  States  is  not  registrable  as 
A  trade-mark  a  trade-mark  even  tinder  the  ten  years'  clause.  It 
must  not  con-  has  been  held  that  its  use  in  that  connection  is 
or* °o at  of  opposed  to  public  policy.  (American  Glue  Corn- 
arm*  or  other  pany,  ex  parte,  120  Official  Gazette,  324.) 
insignia  of  The  registration  of  the  coat  of  arms  of  the  state 

States  "or  "of    °^   Maryland   was  refused  registration,   application 
any  state,  or    having  been  made  under  the  ten  years '  clause. 
municipality,  In  another  case,  registration  of  a  simulation  of 

fa'tionthe'r'e'of    the  snield  of  the  United  States,  with  alternate  red 

and  white  stripes,  was  refused  registration. 
It  would  seem  at  first  consideration  that  if  the  object  of  using 
a  trade-mark  is  to  indicate  the  origin  of  a  com- 
modity, the  most  effective  mark  would  be  simply  the 
maker's  name — "James  Brown"  for  goods  made  by 
James  Brown,  and  "William  Jones"  for  goods  made 
by  William  Jones. 

This  logic  would  be  indisputable  if  there  were  a 
different  family  name  for  every  individual.  But 
names  are  limited  in  number — there  are  eleven 
pages  of  Smiths  in  the  New  York  City  Directory — 
and  every  man  has  a  natural  and  inalienable  right 
to  use  his  own  name.  It  is  obvious  that  a  family  name  lacks 
the  exclusiveness  that  is  an  essential  quality  of  a  legitimate 
trade-mark. 

But  a  personal  name  may  be  written,  or  printed,  or  stamped 
in  such  a  way  that  the  peculiarities 
of  writing,  or  printing,  or  design, 
may  dominate  the  name  and  be 
the  most  conspicuous  feature  of 
the  combination. 

The  trade-mark  Act  provides 
that  "no  mark  (shall  be  regis- 
tered) which  consists  merely  in 
the  name  of  an  individual,  firm,  corporation,  or  association,  not 
written,  impressed  or  woven  in  some  particular  or  distinctive 
manner,  or  in  association  with  a  portrait  of  the  individual." 
In  this  clause  the  framers  of  the  Act  have  endeavored  to  put  a 
logical  restriction  on  the  injudicious  use  of  personal  names  as 
trade-marks  and  the  endless 
litigation  that  has  always  re- 
sulted from  this  practice. 

The  names  of  historical 
personages  (not  living)  may  be 
registered  as  trade-marks,  but 
the  name  of  a  living  person 
cannot  be  used  without  his 
consent. 

The  phrase  "Gibson  Girl" 
as  a  mark  for  shoes  was  re- 
fused registration,  as  the  word  "  Gibson  "  obviously  referred  to 


THIS    TRADE-MARK    OF    A    JELLT 

POWDER  IS  A  COINED  WORD,  MADE 
BY  SPELLING  THE  PROPRIETOR'S 
NAME  "HANSEN"  BACKWARDS 


STATUTE  THIS  WAV  OF  PRESENTING 
THE  NAME  "GILLETTE"  IS  CONSIDERED 
DISTINCTIVE.  NOTE  THAT  THE  DEVICE 
DOMINATES  THE  NAME,  AND  Pl'TS  IT 
INTO  A  POSITION  OF  RELATIVELY 
SECONDARY  IMPORTANCE. 


Charles  Dana  Gibson,  a  living  artist. 


Trade-Names. 


In  case  of  the  registration  of  names  of  individuals,  firms  or 
corporations  the  restriction  of  the  law  that  the  name  must  be 
shown  in  some  "particular  or  distinctive  manner"  has  been 
interpreted  to  mean  a  presentation  of  the  name  in  such  a 
form  that  the  peculiarities  of  lettering,  or  writing,  or  of  an 
accompanying  device  are  so  pronounced  that  they  dominate 
the  name  and  throw  it  into  a  position  of  secondary  importance. 
The  meaning  of  this  clause  is  best  shown  by  means  of  examples 
of  proper  names,  registered  and  used  as  trade-marks.  A 
number  of  trade-marks  of  this  character  may  be  found  in  this 
book. 

Many  portraits  of  living  persons  are  used  as  trade- 
marks— notable  among  them  being  the  face  of  W.  L.  Douglas, 

.  ,  shoe  manufacturer;  and  the 
a  lfvk£aindi.  portrait  of  Thomas  A.  Edison, 
vidual  is  not  used  in  connection  with  his 
^*£  facsimile  signature,  as  a  trade- 
th'e  mark  for  Edison  phonographs. 
Among  historical  char- 


combined  in  a  trade-mark  for 
cigars;    the  face  of  Benjamin 


.    P»T.   OFF. 

THIS  PORTRAIT  OF 
BENJAMIN  FRANKLIN 
IS  THE  TRADE-MARK. 
OF  THE  SATURDAY 
EVENING  POST. 


application  is 
accompanied 

fafn  thceon^ent   of  Robert"  Burns,  the  poet,  are 

of  the  person 
whose  por- 
trait  is  used  pfankHn  ^  uged  as  a  lfade_ 

mark  for  the  Saturday  Evening  Post,  and 
will  be  found  printed  on  the  editorial  page 
of  each  issue;  Bismarck  is  a  name  for 
collars;  Napoleon  is  used  in  connection 
with  a  brand  of  flour;  and  "Bob "  Ingersoll 
is  the  trade-mark  of  a  cigar. 

It  is  a  definite  principle  of  the  common 
law  that  fraud  vitiates  any  transaction 
that  it  touches.  A  trade-mark  that  is  deceptive  and  misleading 
cannot  be  protected,  no  matter  if  its  registration  should  be 
accomplished. 

"  Knights  of  Labor"  was  refused  registration  as  a  trade-mark 

for  whiskey,  as  the  evident  intent  of  the  mark  was 

A  trade-mark    to  mislead  purchasers  into  a  belief  that  the  whiskey 

tra'tffeT/'i't    was  produced  by  the   Knights  of  Labor,   a  labor 

conveys  in    organization. 

any  way  a  A  similar  case  is  exhibited  in  the  attempt  to 
tatfonPof8the  register  the  name  "Masonic"  as  a  mark  for  cigars. 
article  Registration  was  refused. 

The  name  "Malt  Myrrh"  was  refused  registra- 
tion as  a  trade-mark  for  malt  liquors  when  it  was  shown  that  the 
liquors  did  not  contain  myrrh. 

The  name  "Old  Country  Soap, "  used  in  connection  with  soap 
in  such  a  way  as  to  lead  purchasers  to  believe  that  the  soap  was 
manufactured  in  Europe,  was  held  by  the  court  in  the  case  of 
Wrisley  v.  Iowa  Soap  Company  to  be  deceptive,  and  protection 
against  infringement  was  refused. 


24  Trade-Marks. 


A  false  representation  on  a  trade-mark  to  the  effect  that  the 
article  is  patented  when  it  is  not,  is  sufficient  to  vitiate  the  trade- 
mark. 

A  trade-mark  registration  does  not  protect  when  it  is  used  on 
an  article  different  in  character,  or  com- 
position, or  origin,  from  that  for  which 
it  was  registered.  This  principle  is  very 
important.  A  manufacturer  cannot  do  as 
he  pleases  with  his  trade-mark  without 
regard  to  the  rights  of  the  public.  If  the 
article  for  which  it  was  registered  is  changed 
essentially  in  composition,  or  in  purpose, 
the  trade  mark  ceases  to  be  of  value. 
Trade-marks  under  the  United  States  law 
are  always  specific  and  associated  with  a 

certain  definite  article,   and  not  with   the  proprietor's   general 
business. 

In  Great  Britain  and  Canada  there  are  general  trade-marks, 
which  a  manufacturer  may  use  on  any  article  he  makes,  no  matter 
to  what  diverse  classes  these  articles  belong. 

A   trade-mark   which   is   technically   a  valid   mark,   will  be 

refused  registration  if,  in  the  opinion  of  the  Patent 

U  *not   "*!£         Office,  its  registration  would  be  opposed  to  public 

trable    if  its         policy.     A  few  examples  will  show  what  we  mean. 

registration        The  phrase  "Ask  the  Revenue  Officer"  was  re- 

Tgainst public        jected  as  a  mark  for  whiskey.     The  Patent  Office 

policy  held    that    this    mark,    appearing   on    bottles   or 

barrels,  would  lead  the  public  to  believe  that  the 

contents  had  the  indorsement  of  officers  of  the  government. 

For  a  similar  reason  the  word  "Government"  was  refused 
registration  as  a  mark  for  loose-leaf  binders. 

The  name  of  a  living  Ex- President  cannot  be  registered  with- 
out his  written  consent  (as  in  the  case  of  any  other  living  person), 
and  the  name  of  an  Ex-President,  not  living,  cannot  be  registered 
at  all.  The  use  of  the  name  of  an  Ex- President  as  a  trade-mark 
is  not  considered  consonant  with  the  high  dignity  of  the  Presi- 
dential office. 

Several  applications  have  been  made  within  the  last  few 
years  for  registration  of  the  names  or  portraits  of  Ex-Presidents. 
The  signature  and  portrait  of  Thomas  Jefferson,  combined  in  a 
trade-mark  for  cigars,  was  refused  registration. 

The  words  "Roosevelt  Rose"  were  rejected  on  application 
for  registration,  the  rejection  being  partly  because  "  Rose"  had 
been  registered  on  a  previous  application,  and  partly  because 
Roosevelt  is  a  living  person. 

A  trade-mark  cannot  be  a  color,  because  the  number  of  colors 
Other  is  limited,  and  it  would  be  manifestly  unfair  to  give 

Restriction*       the  exclusive  use  of  a  color  to  any  individual. 

The  use  pf  the  flag  or  coat  of  arms  of  any  foreign  power  is 
prohibited  as  a  trade-mark.  This  restriction  holds  even  when 
the  foreign  power  agrees  to  the  use  of  its  insignia.  The 


Trade-Names.  25 


JELL-O 


Russian  government  consented  to  the  use  of  its  coat  of  arms 
as  a  trade-mark  in  the  case  of  an  applicant  before  the  United 
States  Patent  Office,  but  registration 
was  refused.  The  law  is  mandatory, 
and  is  not  affected  by  agreement. 

Any    design    or   picture  which    has 
been  adopted  by  a  fraternal  society  as 
its    emblem    is     not     registrable    as    a  TR™ERMAR£^E  ENDING*' AN".\ 
trade-mark.  "0- — SUCH  AS  CRISCO,  OMO, 

For  obvious  reasons,  scandalous  or  ONOTO,  QUIXO,  PEBECO — 
immoral  matter  is  refused  registration.  THAT  MARKS  OF  THIS  TYPE 

A  trade-mark  cannot  be  a  shape,  or  SJNCTIVENESS  P° 
a  package,  or  a  container. 

A  trade-mark  cannot  be  the  article  of  merchandise  itself, 
for  the  "mark"  must  necessarily  be  different  from  the  thing 
marked. 

Proposed  Amendment  to  the  Law 

As  this  book  goes  to  press,  an  amendment  to  the  Act  of  1905 
is  before  Congress.  This  amendment,  which  will,  in  all  proba- 
bility, become  a  law,  denies  the  right  of  anyone  to  register  as  a 
trade-mark  any  mark  which  consists  of  "any  name,  distinguish- 
ing mark,  character,  emblem,  colors,  flag  or  banner,  adopted  by 
any  institution,  organization,  club  or  society  which  was  in- 
corporated in  any  state  in  the  United  States  prior  to  the  date  of 
the  adoption  and  use  by  the  applicant." 

This  proposed  addition  to  the  law  is  the  result  of  an  attempt 
of  certain  manufacturers  to  capitalize  the  prestige  of  various 
well-known  clubs  and  other  organizations.  A  case  in  point  was 
a  recent  attempt  to  register  the  initials  "Y.M.C.A. "  as  a  trade- 
mark. Another  flagrant  case  was  the  adoption  of  the  emblem  of 
the  New  York  Athletic  Club — a  winged  foot — as  a  trade-mark 
by  a  manufacturer  of  men's  clothing.  On  formal  protest  by  the 
*Tew  York  Athletic  Club  the  registration  of  this  mark  was  held  up. 


by 
Ne 


The  Trade-Mark  Status  of  Patented  Articles 


A  patent  may  be  denned  as  an  exclusive  monoply  in  the 
manufacture  and  sale  of  a  new  and  useful  invention,  granted  by 
law  for  a  term  of  years  to  the  inventor. 

As  an  offset  to  this  monoply,  which  is  granted  to  the  inventor 
as  his  reward  from  the  public,  the  inventor's  exclusive  right 
ceases  at  the  expiration  of  the  patent,  and  any  one  may  manu- 
facture and  sell  the  invention. 

It  would  be  manifestly  unfair  to  the  public  if  the  owner  of 
the  patent  could,  at  its  expiration  —  still  retain  the  exclusive  right 
to  use  the  name  and  trade-mark  under  which  the  invention  had 
been  sold.  If  this  were  permitted,  the  effect  would  be  a  partial 
continuance  of  the  monopoly.  The  name  and  the  trade-mark 
belong  to  the  article  —  not  to  the  individual  —  and  the  right  to  use 
them  goes  with  the  right  to  manufacture  the  article. 


26  Trade-Marks. 


The  Singer  Manufacturing  Company,  when  the  patents  on  its 
sewing    machine    were    about    to    expire, 
adopted  as  a  trade-mark  the  word  ' '  Singer' ' 
blended  with  a  device.     The  effect  of  this 
action,   if  the  validity  of  the  trade-mark 
A     COINED     WORD,    had  been  sustained,   would  have  been  to 
MADE  FROM  THE  WORDS    perpetuate  the  right  to  the  exclusive  use  of 
QUER."  the  word   "Singer"   as   applied  to  sewing 

machines.      In  this  event,  at  the  expiration 

of  the  patents,  any  person  would  have  the  right  to  manufacture 
Singer  machines,  but  only  the  Singer  Manufacturing  Company 
would  have  had  the  use  of  the  name  ' '  Singer. ' ' 

It  was  held  by  the  courts  that  the  right  to  use  the  name 
"Singer,"  as  applied  to  machines  of  this  particular  design,  be- 
came public  property  when  the  patents  expired.  The  court  said, 
in  the  case  of  Brill  v.  Singer  Mfg.  Co.  (41  Ohio  St.) : 

"A  patentee  or  his  assignee,  by  incorporating  into  his  trade- 
mark the  distinctive  name  by  which  a  patented  machine  has 
become  known  to  the  public  during  the  existence  of  the  patent, 
cannot,  after  the  expiration  of  the  patent,  take  away  from  the 
public  the  right  of  using  such  name.  The  trade-mark  cannot 
be  made  a  guise  for  extending  the  monopoly,  or  preventing  the 
name  from  becoming,  with  the  patent,  the  property  of  the 
public." 

The  Singer  case  is  typical  of  cases  of  this  character.  In  the 
case  of  .-  ever  Stamping  Co.  v.  Fellows  (163  Mass.  191,  194,  196) 
the  cou  \  said : 

"When  one  who  has  a  patented  article  gives  to  it  and  puts 
upon  it  a  name,  and  calls  it  by  that  name  and  no  other,  and  it 
becomes  known  to  the  trade  and  to  the  public  exclusively  by  the 
name  so  given  to  it  by  the  patentee  or  person  controlling  the 
patent,  then  certainly  it  may  be  said  that,  as  a  general  rule,  the 
right  to  the  exclusive  use  of  the  name  ceases  with  the  termina- 
tion of  the  exclusive  right  to  make  and  sell  the  thing." 


CHAPTER  IV 
The  Elements  of  a  Good  Trade-Mark 

THE  reader  who  has  perused  the  preceding  pages  devoted  to 
a  discussion  of  what  a  trade-mark  cannot  be,  begins  to 
wonder,  perhaps,  what  part  of  the  language  is  left  unre- 
stricted. 

It  is  true  that  the  number  of  restrictions  imposed  by  the  law 
and  the  courts  is  considerable,  but  the  language  is  virtually 
inexhaustible,  with  its  infinite  possible  combinations  of  letters 
and  words.  And  to  these  possibilities  of  construction  must  be 
added  the  limitless  varieties  of  designs  and  symbols  which  are 
registrable  and  valid  under  the  law. 

A  trade-mark  may  be: 

A  coined  word,  like  Calox,  Coca-Cola,  Omo,  Jap-a-lac, 
Crisco,  Pebeco,  Celluloid,  Plexo  (a  trade- 
mark for  suspenders;  also  for  a  toilet 
preparation),  Sapolio,  Cravenette,  Jell-O, 
Kodak,  Uneeda,  Pro-phy-lac-tic,  Crex 
and  Quixo. 

A  symbol,  like  the  Baker  chocolate 
girl;  the  Prudential  Insurance  Com- 
pany's trade-mark,  which  consists  of  a 
picture  of  the  Rock  of  Gibraltar;  the 
Merrimack  duckling;  the  spear  of 
Spearmint  chewing  gum;  the  Puritan 

painter,  used  on  Bay  State  brick  and  THE  ROCR  op  GIBRALTAR 
cement  coating;  the  Ford  automobile  HAS  LONG  BEEN  THE  TRADE- 
mark,  consisting  of  a  winged  pyramid;  MARK  OF  THE  PRUDENTIAL 
or  the  representation  of  a  mask  or  IJ^,UR 
domino,  used  on  packages  of  Crystal  POLICIES,  AND^IS  ^JSED'IN 
Domino  sugar;  or  the  painter  boy  of  CONVENTIONAL  TRADE-MARK 
the  National  Lead  Company. 

A  combination  of  a  word,  or  words,  and  a  symbol,  like  Thomas 
A.  Edison's  portrait  and  signature,  used 
in  connection  with  phonographs;  a  picture 
of  a  black  cat  and  the  words  "Black  Cat," 
used  as  a  hosiery  trade-mark;  the  trade- 
mark of  the  Vacuum  Oil  Company,  con- 
sisting of  a  picture  of  a  gargoyle  in  con- 
nection with  the  word  "Gargoyle";  or  a 
representation  of  a  swan  accompanied  by 
the  word  "Swan,"  used  on  fountain  pens. 

A  portrait,  like  Mennen's  Talcum  Powder  mark,  which  is  a 
picture  of  Gerhard  Mennen;  or  the  portrait  of  Robert  Burns, 
used  on  cigars. 

27 


2'8 


Trade -Marks. 


THE  TRADE- 
MARK USED  ON 
HEISEY  GLASS. 


A  word,  or  words,  used  in  a  fanciful  (non-descriptive)  sense, 
like  "Cat's  Paw,"  a  trade-mark  for  rubber  heels;  "Bachelor's 
Friend,"  a  suggestive  trade-mark  for  hosiery;  the  word  "Ribbon," 
a  mark  for  a  tooth-paste;  "  Republic,  "  used  on  automobile  tires; 
"Velvet,"  a  trade-mark  for  smoking  tobacco;  "Onyx,"  the 
trade-mark  of  a  well-known  brand  of  hosiery;  "Ivory,"  which 
stands  for  a  famous  brand  of  soap;  "Diamond,"  a  name  for 
tires;  "Arrow."  used  on  collars;  "Blue-Jay,  "  a  trade-mark  for  a 
corn-plaster;  "Big  Ben,"  used  on  alarm  clocks;  "Lifebuoy," 
the  name  of  a  soap;  or  "Occident,"  the  name  of  a  flour. 

A  historical  or  mythological  character,  like  Juno,  King  William, 
Stonewall  Jackson,  Cupid,  Venus  (there  is  a 
lead  pencil  carrying  this  trade-mark),  Samson 
(applied  suggestively  to  a  brand  of  rope),  or 
Apollo  (the  name  of  a  piano-player). 

Initials  or  arbitrary  numbers,  like  the  "G.E." 
trade-mark  of  the  General  Electric  Company; 
the  number  "4711,"  applied  to  perfumery  and 
toilet  articles;  "61,"  a  floor  varnish;  "E-Z," 
the  suggestive  trade-mark  of  jar  used  in  preserv- 
ing fruits;  "O.K.,"  the  name  of  a  clip  to  hold 
papers  together;  "B.V.D.,"  the  trade-mark  of 
a  well-known  line  of  underwear;  or  the  big  "  H  " 
enclosed  in  a  diamond-shaped  design,  used  as  a  trade-mark  on 
Heisey's  glassware. 

The  business  name  of  person,  firm  or  corporation  when  written, 
printed,  impressed  or  woven  in  a  distinctive  manner, 

Sor  in  association  with  a  portrait,  or  in  an  auto- 

C  graphic  form.     An  example  of  this  type  of  trade- 

mark is  the  word  "Cross,"  reproduced  here. 
The  name  "Gillette,"  used  on  safety  razors,  is 
enclosed  in  a  diamond  and  crossed  by  an  arrow. 
A  well-known  trade-mark  of  this  character  is 
the  name  "Stewart  Hartshorn,"  found  on  most 
shade-rollers. 

Marks  that  may  be  technically  defective  are  registrable  under 
the  ten  years'  clause  if  they  have  been  in  exclusive  use  by  the  ap- 
plicant for  ten  years  preceding   1905.     The  word    "Faultless," 
registered  by  E.Rosenf eld  &  Com- 
pany,  of   Baltimore,   as   a  trade- 
mark for  garments,  belongs  to  this 
class.     "Faultless"  is,  of  course, 
jdescriptive,  but  it  is  nevertheless 
registrable  under  the  ten  years' 

A  VERY  EFFECTIVE  TRADE-MARK,   clause.    Another  mark  of  the  same 
USED    WITH    BISCUITS    SOLD    IN   kind  consists  of  the  word      Cow- 
ard"— a    trade-mark    for    shoes. 
Coward  is  the  proprietor,  and  un- 
der the  Act  of  1905  his  name  has  no  eligibility  as  a  trade-mark 
unless  it  is  written  or  printed  in  a  distinctive  manner.     But  his 
name  has  been  used  as  a  trade-mark  since   1868,  and,  conse- 
quently, falls  within  the  provisions  of  the  ten  years'  clause. 


Trade-Names.  29 


It  is  easy  enough  to  devise  a  trade-mark  that  will  comply  with 
the  letter  and  the  spirit  of  the  law.  But  a  trade-mark  should 
be  something  more  than  merely  registrable  and  protectable. 
Think  of  the  immense  advertising  and  selling  effort  that  must 
be  brought  to  bear  to  overcome  the  inertia  of  a  meaningless  or 
unsuitable  trade-mark. 

The  Nine  A  proposed  trade-mark  should  not  be  adopted 
Tests  of  a  until  every  one  of  the  following  questions  can  be 
Trade-Mark  answered  affirmatively  in  regard  to  it: 

1.  Is  it  easy  to  speak? 

2.  Is  it  easy  to  remember? 

3.  Is  it  easy  to  spell  ? 

4.  Is  it  simple  in  design? 

5.  Is  it  attractive  in  sound  and  appearance? 

6.  Is  it  suggestive  of  the  good  qualities  of  the  merchan- 
dise? 

7.  Is  it  different  from  other  trade-marks  of  the  same 
class? 

8.  Can  it  be  affixed  to  the  goods  with  which  it  is  to  be 
used? 

9.  Is  it  registrable  and  protectable? 

Competent  trade-mark  experts,  such  as  those  on  the  staff  of 
Munn  &  Company,  never  submit  a  proposed  trade-mark  until 
it  passes  this  rigorous  examination  successfully. 

Few  trade-marks  in  commercial  use  can  stand  these  tests, 
because  most  marks  have  been  designed  without  any  clear  per- 
spective of  the  part  they  were  to  play  in  business. 

As  a  matter  of  interest  and  instruction,  let  us  take  several 
well-known  trade-marks,  at  random',  and  put  them  through  the 
list  of  test  questions. 

Opening  a  current  magazine,  the  first  trade-mark  we  see  is 
"Postum,"  the  name  of  a  substitute  for  coffee.  Postum  is  easy 
to  say  and  remember  and  spell.  It 
is  simple,  but  not  particularly  attrac- 
tive in  sound.  It  has  no  suggestive-  ,  'as&SHfc. 
ness,  except  the  artificial  suggestive-  WOLFS^liHEAD 
ness,  of  familiarity.  It  is  distinctive, 
registrable,  and  is  virtually  infringe- 
ment-proof. If  the  figure  100  should 
be  set  down  as  denoting  a  perfect 

trade-mark,  then  Postum  should  be  graded  at  about  80.  It 
wholly  lacks  suggestiveness,  and  it  is  not  attractive  though  not 
displeasing. 

The  next  mark  that  attracts  our  attention  in  this  magazine 
is  "Siwelclp,"  a  coined  word,  applied  to  a  flushing  device  used 
in  connection  with  bathroom  toilets.  Siwelco  is  not  easy  to 
pronounce,  it  is  not  euphonious,  it  is  not  easy  to  remember  or 
to  spell.  It  is  the  reverse  of  attractive  in  sound,  and  it  carries 
no  suggestiveness.  It  is  registrable  and  protectable. 

The  next  trade-mark  is  "O.K.,"  applied  to  paper  fasteners. 
This  mark  possesses  every  good  feature.  It  is  suggestive  in  the 


30 


Trade-Marks. 


sense  that  "O.K."  means,  in  ordinary  speech,  "all  right,  satis- 
factory, good."  These  fasteners  are  used  in  offices.  The  symbol 
"O.K."  has  a  distinct  meaning  in  commercial  language.  We 
are  of  the  opinion  that  "O.K."  used  as  a  trade-mark  for  office 
supplies  should  be  graded  100. 

"Cat's  Paw,"  a  trade-mark  for  rubber  heels,  is  the  next. 
It  is  an  example  of  a  word  that  is  suggestive  in  the  wrong  way. 
"Cat's  Paw"  suggests  the  soft,  quiet  tread  of  a  cat — and  of 
rubber  heels.  At  first  glance  it  would  seem  that  "Cat's  Paw" 
is  an  ideal  name.  But  those  who  sell  rubber  heels  say  that  the 
noiseless  tread  (or  "sneaky  walk,"  as  one  shoemaker  stated  it) 
is  the  greatest  of  all  drawbacks  to  the  sale  of  rubber  heels.  In 
short,  the  name  is  suggestive,  but  suggests  a  defect. 

The  next  trade-mark  that  comes  to  hand  is  the  Ford  auto- 
mobile mark,  reproduced  on  this  page. 
It  should  be  noted  at  the  start  that  the 
mark  as  it  stands,  with  the  phrase 
"The  Universal  Car"  as  a  part  of  it,  is 
not  registrable,  as  it  contains  a  De- 
scriptive phrase.  The  rest  of  the  de- 
sign is  registrable,  and,  after  registra- 
tion, the  descriptive  phrase  might  be 
imposed  upon  it  without  destroying  its  validity. 

In  considering  this  mark  the  reader  should  bear  in  mind  that 
an  automobile  trade-mark  must  be  of  such  character  that  it 
can  be  worked  out  in  metal  and  attached  to  the  front  of  the 
radiator.  The  Ford  device  is  suited  to  this  form  of  affixation. 

This  trade-mark  shows  a  pyramid  with  wings.  Its  symbolism 
is  the  pyramid  for  strength  and  solidity,  and  the  wings  for  speed. 
Speed  and  solidity — two  desirable  qualities  in  an  automobile. 
The  symbolism  is  not  apparent  until  explained,  and  the  mark 
is  rather  meaningless  to  the  ordinary  observer,  but,  considering 
the  restrictions  that  surrounded  its  creation,  we  are  of  the 
opinion  that  it  is  a  very  good  trade-mark. 

Next  we  come  to  "Ralloc,"  which  is  the  trade-mark  of  a 
collar-retainer.  The  word  is  obviously  the  word  "Collar" 
spelled  backward.  It  is  not  euphonious,  or  attractive,  or  dis- 
tinctive in  any  way.  This  mark  is 
an  example  of  a  large  class  of  trade- 
marks which  bears  upon  them  the  evi- 
dences of  only  one  purpose — and  that 
is,  to  produce  something  which  will 
not  be  rejected  by  the  Patent  Office. 
"Crex"  is  an  excellent  trade-mark. 
It  is  an  adaptation  of  the  word  "Carex," 
which  is  the  botanical  name  of  a  sedge- 
like  grass  which  may  be  woven  into  a 
fabric.  Dropping  the  "a,"  we  have  "Crex."  This  name  sticks 
in  the  memory;  it  is  easy  to  spell,  easy  to  say,  and  is  quite  dis- 
tinctive. It  lacks  inherent  suggestiyeness,  but  it  is  the  kind 
of  word  that  may  be  readily  popularized  by  advertising. 


ABSORBINEJ5: 


MARK  WHICH  IS  SO  SUG- 
GESTIVE THAT  IT APPROACHES 
WITHIN  A  HAIR'S  BREADTH 


Trade-Names.  31 


There  is  a  toilet  preparation  widely  advertised  and  sold  under 
the  name  "Sempre  Giovine,"  meaning  "always  young."  This 
trade-mark  must  be  a  tremendous  drawback  to  the  success  of 
the  article  with  which  it  is  associated.  It  cannot  be  pronounced 
properly  except  by  those  who  have  taken  lessons;  and  it  is 
difficult  to  remember.  To  an  English-speaking  person  it  con- 
veys no  suggestion.  Foreign  words  should  be  avoided  in  de- 
vising trade-marks.  People  do  not  like  to  ask  for  things  by 
names  which  they  cannot  pronounce. 

The  trade-mark  affixed  to  the  linens  sold  by  McCutcheon, 
of  New  York,  a  store  famous  for  the  quality  of  its  fabrics,  con- 
sists of  the  picture  of  an  old-fashioned  spinning-wheei,  -without 
wording.  This  is  a  very  good  trade-mark.  It  brings  up  a 
mental  picture  of  the  slowly-wrought  hand-woven  linens  of  our 
grandmothers'  time,  fabrics  that  looked  good  and  wore  well. 

There  are  trade-marks  so  admirably  adapted  to  their  pur- 
pose that  they  seem  to  be  the  work  of  genius.  "Uneeda, " 
applied  to  crackers  in  a  sealed  package,  is  such  a  trade-mark. 
"  Rainbow,"  a  trade-mark  for  dyes,  is  another  happy  inspiration. 
This  name  makes  one  think  of  the  fine  colors  and  delicate  tones 
of  a  rainbow.  It  stimulates  the  idea  that  these  dyes  emulate 
a  rainbow  in  beauty.  "  Skidoo" — a  trade-mark  used  in  connec- 
tion with  a  small  gasoline  engine  for  launches — is  another  trade- 
mark that  touches  the  top  notch  of  merit.  It  suggests  agility 
and  lightness,  and  the  ability  to  get  in  motion  and  scurry  away. 

Special  Notice 

An  enormous  waste  of  mental  effort  expended  by  manufac- 
turers and  their  representatives  in  devising  unsatisfactory  trade- 
marks might  be  avoided  by  consultation  with  us — either  per- 
sonally or  by  mail — before  any  work  is  done  in  the  way  of 
devising  a  mark. 

There  are  more  than  40,000  registered  marks  in  existence, 
and  approximately   100,000  unregis- 
tered   trade-marks    that    have    been 
used  long  enough  to  be  capable  of 
protection  under  the   common   law. 
One  can  see  that  the  chances  are  large          TRADE- 
of  a  new  trade-mark  user  deciding      THE  KAL 
upon  a  mark  that  is  already  in  use.        OMPAN  ' 
Many  marks  are  sent  to  us  to  be  reg- 
istered  on  which  it  is  evident  that 
much   thought   has   been   expended, 

but  which  are  so  nearly  like  other  marks  already  in  existence 
that  their  registration  and  protection  are  impossible. 

A  search  of  the  files,  for  which  we  charge  only  $5.00,  generally 
saves  many  times  its  cost  in  mental  work  and  vexation. 

Our  staff  includes  some  expert  designers  of  trade-marks,  who, 
living  in  the  trade-mark  atmosphere,  and  knowing  the  best  that 
is  being  done  in  trade-mark  construction,  are  fully  prepared  to 
design  marks  that  have  every  element  of  distinctiveness,  sug- 
gestiveness  and  validity. 

For  designing  a  trade-mark  our  charge  is  proportioned  to  the 
time  and  labor  involved. 


lAZoo 


CHAPTER  V 

Trade-Mark  Protection 

AN  owner  of  a  valid  trade-mark  is  protected  by  law  in  its 
exclusive  use,  as  he  is  in  the  use  of  any  other  property 
that  he  may  own. 

But  to  obtain  this  protection  his  trade-mark  must  possess 
.  all  the  essentials  of  validity,  and 
he  must  be  able  to  prove  infringe- 
ment— in  short,  the  burden  of 
proof  is  upon  the  owner  of  the 
trade-mark  alleged  to  have  been 

infringed. 

Infringement  of  a  trade-mark 
is  defined  in  Hesseltine's  "Law 
of  Trade-Marks  and  Unfair  Trade" 

as:  "An  imitation  such  as  would  be  likely  to  deceive  the  ordinary 
customer  in  the  usual  course  of  trade  in  the  purchase  of  goods 
of  one  person  as  those  of  another." 

The  question  of  the  infringement  of  a  registered  trade-mark 
is  covered  by  sections  16,  17,  18  and  19  of  the  Act  of  1905. 
Section  16  is  quoted  here: 

SECTION  16  That  the  registration  of  a  trade-mark  under  the 
provisions  of  this  act  shall  be  prima  facie  evidence  of  ownership. 
Any  person  who  shall,  without  the  consent  of  the  owner  thereof, 
reproduce,  counterfeit,  copy,  or  colorably  imitate  any  such  trade- 
mark and  affix  the  same  to  merchandise  of  substantially  the  same 
descriptive  properties  as  those  set  forth  in  the  registration  or  to 
labels,  signs,  prints,  packages,  wrappers,  or  receptacles  intended 
to  be  used  upon  or  in  connection  with  the  sale  of  merchandise  of 
substantially  the  same  descriptive  properties  as  those  set  forth  in 
such  registration,  and  shall  use,  or  shall  have  used,  such  reproduc- 
tion, counterfeit,  copy  or  colorable  imitation  in  commerce  among 
the  several  tribes,  or  with  foreign  nations,  or  with  the  Indian  tribes, 
shall  be  liable  to  an  action  for  damages  therefor  at  the  suit  of  the 
owner  thereof;  and  whenever  in  any  such  action  a  verdict  is 
rendered  for  the  plaintiff,  the  court  may  enter  judgment  therein  for 
any  sum  above  the  amount  found  by  the  verdict  as  the  actual 
damages,  according  to  the  circumstances  of  the  case,  not  exceeding 
three  times  the  amount  of  such  verdict,  together  with  the  costs. 

Note  that  in  case  of  infringement  of  a  registered  trade-mark, 
suit  may  be  brought  in  a  Federal  Court,  that  triple  damages 
may  be  collected  in  case  the  proof  of  infringement  is  established, 
and  the  defendant  will  be  forbidden  to  use  the  offending  mark. 

Infringement  is  a  specific  violation  of  the  trade-mark  statutes. 
It  falls  under  the  broader  and  more  general  law  of  unfair  busi- 
ness competition,  which  takes  cognizance  not  only  of  trade-mark 
infringement,  but  also  of  all  other  devices  of  deception  by  means 
of  which  one  person  trades  upon  the  reputation  of  another. 

32 


Trade-Names. 


33 


Nims,  in  his  excellent  book  on  "Unfair  Business  Competi- 
tion," says: 

"The  use  of  a  special  mark  in  connection  with  particular 
goods  or  a  particular  business  is  a  representation  that  those 
goods  or  that  business  are  the  goods  or  business  of  the  person 
to  whom  the  mark  belongs;  that  they  belong  to  the  person  to 
whom  the  mark  has  become  identified.  If  such  representation 
is  false,  a  case  of  unfair  competition  exists.  The  law  of  trade- 
marks, therefore,  is  merely  a  specialized  branch  of  the  broader 
doctrine  of  unfair  competition.  Relief  in  trade-mark  cases  is 
afforded  upon  the  express  ground  that  every  person  is  entitled 
to  secure  such  profits  as  result  from  a 
reputation  for  superior  skill,  industry, 
or  enterprise,  or,  in  other  words,  from 
his  good-will.  But,  as  has  just  been 
seen,  this  is  the  precise  principle  upon 
which  relief  is  afforded  in  cases  of  un- 
fair competition.  The  right  of  action 
in  technical  trade-mark  cases  is  based 
that  an  exclusive 


COLGATE'S 

RIBBON  DENTAL  CREAf 


ONLY  THE  WORD  "RIBBON" 
S  REGISTERED.  "COL- 

;ATE'S"     is     A     PERSONAL 

iiiai*.  ^ctacs   13    uo.*^      NAME    AND  "DENTAL CREAM" 

upon    the    ground    that    an    exclusive    is  DESCRIPTIVE. 
property  right  in  the  mark  is  claimed , 

and  that  the  mere  use  of  a  close  imitation  of  it,  by  another, 
tpso  facto  creates  a  cause  of  action,  regardless  of  the  effect  of 
such  use  or  imitation.  But  the  courts  in  the  past  have  fre- 
quently lost  sight  of  the  broad  general  principles  of  unfair  com- 
petition, and  have  sought  to  decide  cases  of  unfair  competition 
pure  and  simple,  'upon  principles  analogous  to  trade-marks.' 
The  owner  of  a  technical  trade-mark  claims  it  as  his,  regardless 
of  the  effect  on  others.  If  someone  else  uses  it  or  imitates  it, 
the  owner  claims  a  right  of  action  because  the  mark  is  his  and 
his  alone." 

And  further  on,  in  the  same  volume: 

' '  Unfair  competition  does  not  necessarily  involve  the  viola- 
tion of  any  exclusive  right  to  use  a 
word,  mark  or  symbol.  It  may  arise  from 
the  use  of  words,  marks  or  symbols  which 
are  free  for  everybody  to  use  and  are  not 
subject  to  exclusive  appropriation  by  any- 
one. The  existence  of  this  right  of  action 
depends  upon  the  question  of  fact,  whether 
what  was  done  in  any  special  case  tends 
to  pass  off  the  goods  of  one  man  as  being 
those  of  another,  or  tends  to  deprive 
any  one  of  his  rights.  This  is  the  only 
substantial  distinction  between  cases  of 
unfair  competition,  or  passing  off  actions 
as  they  are  called  in  E 
trade- marks." 

This  subject  is  so  large  and  far-reaching  that  we  can  touch 
upon  it  here  only  in  the  most  general  way,  and  as  incidental 
only  to  the  question  of  trade-marks. 


YALE 


LOCK 

THIS 

GEO- 


THE YAL 

TRADE-MARK. 
MARK  IS 
GRAPHICAL  TERM 
WHICH  HAS  ACQUIRED 
A  SECONDARY  MEANING 
AS  A  TRADE-MARK  FOR 


COMMON    LA 


England,   and  cases  of   infringement   of 


Trade-Marks. 


Unfair  competition,  so  far  as  trade-marks  are  concerned,  may 
take  various  forms,  the  most  common  of  which  are  discussed  in 
the  following  pages. 

ist.  There  may  be  a  plain,  bare-faced  adoption  by 
one  individual  of  a  trade-mark  belonging  to 
another. 

In  certain  lines  of  business — notably  the  liquor,  wine  and 
cigar  trades,  this  sort  of  infringement  is  quite  common,  and 
organizations  of  houses  dealing  in  these  products  have  been 
formed  to  check  it. 

Many  states  have  enacted  laws  making  the  counterfeiting  of 
a  label  or  a  trade-mark  a  penal  offense.  Under  the  Federal  Law, 
infringement  is  not  a  penal  offense,  and  only  civil  actions  may 
be  brought  under  this  statute. 

One  of  the  most  interesting  cases  of  the  adoption  of  a  trade- 
name  belonging  to  another  that  has  ever  appeared  in  the  Federal 
courts  is  that  of  Wolf  Bros.  v.  Hamilton  Brown  Shoe  Co.  (165 
Federal  Rep.  413). 

Wolf  Bros.,  shoe  manufacturers  of  Cincinnati,  had  established 
a  common  law  right  to  the  use  of  the 
name  "American  Girl"  as  applied  to 
shoes.  This  mark  is  not  registrable,  as 
it  is  both  geographical  and  descriptive. 
The  plaintiff  has  used  the  mark  con- 
tinuously since  1896.  In  connection 
with  the  wording,  there  is  a  lady's 
head,  and  the  phrase:  "A  shoe  as  good 
as  its  name."  Certain  styles  are  desig- 
nated by  numerals,  such  as  404,  408 
and  397. 

The  defendant,  a  St.  Louis  concern,  began  to  use,  in  1900, 
as  a  trade-mark  for  shoes,  the  words  "American  Lady,"  with  a 
lady's  picture.  Later  on,  they  advertised  "American  Lady" 
shoes  with  the  phrases  "With  the  character  of  the  woman" 
and  "The  shoe  deserves  its  name."  The  numbers  used  by  the 
complainant  in  designating  styles  were  also  taken  by  the  de- 
fendant. 

The  defendant,  one  of  the  largest  shoe  manufacturers  in 
the  country,  advertised  the  "American 
Lady"  shoe  extensively,  spending  more 
than  one  hundred  thousand  dollars  in  pub- 
licity after  suit  had  been  brought  by  the 
complainant. 

On  trial  of  the  complainant's  suit  for 
damages,  brought  before  the  U.  S.  Circuit 
Court,  the  defendant's  treasurer  testified 
that  objection  to  use  the  name  had  been 
DIXON'S  MOTOR  GRA-  formally  made  by  the  complainant  in  1901, 
but  that  he  had  considered  a  protest  from 

a  source  so  insignificant  as  something  of  a  joke,    and  had  paid 
no  attention  to  it. 


AN  ADMIRABLE  TRADE- 
MARK FOR  A  SMOKING  TO- 
BACCO. 


LETTERS,      USED 


Trade-Names. 


35 


It  will  be  noted,  upon  comparison  of  the  two  marks,  that 
the  only  difference  is  the  use  of  "Lady  "  in  the  defendant's  mark 
instead  of  "Girl, "  the  two  being  in  all  other  respects  essentially 
the  same. 

Judgment  was  awarded  the  complainant.  The  defendant 
was  forbidden  to  use  the  "American  Lady"  mark,  and  was 
ordered  to  turn  over  to  the  complainant  all  the  profits  realized 
since  the  inception  of  the  suit. 

The  case  was  prosecuted  further,  however,  and  it  was  sub- 
sequently held  (192  Federal  Rep.  930)  that,  inasmuch  as  the 
shoes  sold  by  the  defendant  bore  in  conjunction  with  the  name 
"American  Lady"  the  name  of  the  defendant,  clearly  indicating 
that  such  shoes  were  of  its  manufacture  and  not  of  complain- 
ant's, there  was  no  unfair  competition.  There  was  no 
evidence  to  show  that  plaintiff  had  been  substantially  damaged 
by  reason  of  curtailment  of  sales,  loss  of  customers  or  decep- 
tion, and  no  attempt  by  the  defendant  to  palm  off  its  product 
as  the  manufacture  of  complainant.  A  judgment  for  nominal 
damages  ($1.00)  was  awarded  to  plaintiff.  The  question  in- 
volved in  this  case  was  one  of  unfair  trade  as  distinguished  from 
the  infringement  of  a  valid  trade-mark. 

2d.     Another  method  of  infringement  is  to  devise  an 
ingenious  similarity  of  a  trade-mark. 

An  infringing  mark  may  be  so  nearly  like  a  well-known  and 
valuable  trade-mark  that  the  unwary  or  careless  may  be  de- 
ceived, yet,  at  the  same  time,  it  may  be  so  dissimilar  that  a 
show  of  defense  may  be  made. 

The  National  Biscuit  Company  has  prosecuted  more  than 
five  hundred  infringements  of  its  trade-marks. 

"  Uneeda"  Biscuit  has  been  imitated  by  "  Ulika,  "  "  Uwanta," 
"Iwanta"  and  dozens  of  other  specious  wordings. 

The  mark  "Yusea"  used  on  incandescent  gas  mantles,  was 
infringed  by  "U-C-A."  In  this 
case  there  was  no  similarity  what- 
ever in  the  appearance  of  the 
marks,  but  evidence  was  produced 
to  show  that  "Yusea"  was  pro- 
nounced "You  see  a,"  and  that  in 
sound  the  marks  were  precisely 
the  same.  Priority  of  registration 
of  the  "Yusea"  mark  was  proved 
and  the  use  of  "U-C-A"  was  ac- 
cordingly enjoined. 

The    word    "Chasseuse"    was  "LA  VOGUE, "A  TRADE-MARK  FOR 

held   by   the   court   to    be    an   in-        WOMEN'S   GARMENTS,   is   AFFIXED 
frincrprnpnt  nf  "Chartrpn^p  "   bntVi         To  EACH  GARMENT  BY  MEANS  OF  A 
inngement  ol     Chartreuse,      botn       SE WED-ON  LABEL. 
marks  being  applied  to  cordials. 

"Grape-Nuts,"  a  cereal  food,  was  not  infringed  by  "Grain- 
Hearts." 


36  Trade-Marks. 


"Old  Crow,"  the  name  of  a  whiskey,  was  not  infringed  by 
"Old  Jay." 

On  the  other  hand,  "Colonial  Dame,"  used  in  connection 
with  perfumery,  was  infringed  by  "Colonial." 

"Chatter-Box,"  an  annual  publication  for  children,  was  in- 
fringed by  "Chatter-Book",  used  as  the  name  of  a  publication 
of  the  same  general  appearance  and  purpose. 

3<f.  Any  person  has  a  right  to  use  his  own  name  in 
business,  but  not  in  such  a  way  as  to  trade  on 
the  reputation  of  someone  else  bearing  the  same 
name. 

A  typical  case  of  this  kind  is  that  of  Royal  Baking  Powder 
Co.  v.  Royal  (122  Fed.  337-1903;  58  C.  C.  A. 
499-500).  An  individual  by  the  name  of 
Royal  went  into  the  business  of  manufac- 
turing baking  powder.  His  product  was 
sold  in  packages  of  the  same  general  ap- 
pearance as  those  containing  the  product 
of  the  Royal  Baking  Powder  Company. 
The  court  held  that  the  respondent  could 
use  his  own  name,  but  "in  the  least  con- 
spicuous manner  possible  consistent  with 
the  right  to  place  his  name  and  address 
upon  the  goods  made  by  him." 

A  similar  case  is  that  of  Von  Faber  v. 
Faber  (124  Fed.  R.  603).  In  this  case  the 
plaintiff,  a  manufacturer  of  lead  pencils,  was  the  owner  of  a 
business  that  began  in  1761.  The  pencils  made  by  this  firm 
had  always  been  marked  "A.  W.  Faber."  The  defendant,  also 
named  Faber,  began  to  manufacture  pencils  in  the  United  States, 
affixing  to  his  product  the  mark  "Faber."  The  court  held 
that  this  was  an  unfair  use  of  his  name,  and  while  he  had  a 
right  to  use  his  own  name.xyet  he  must  prefix  to  it  "JohnE.," 
"Eberhard"  or  "John  Eberhard." 

This  decision  was  subsequently  reversed  (139  Fed.  Rep.  257), 
and  it  was  held  that  the  use  of  the  name  "Faber"  with  the 
initial  "E"  prefixed  thereto  did  not  constitute  unfair  competi- 
tion where  no  fraudulent  intent  or  deception  of  the  public  could 
be  shown. 

The  well-known  chocolate  manufacturers  of  Dorchester, 
Mass.,  Walter  Baker  &  Co.,  have  had  to 
contend  with  many  individuals  bearing  the 
name  of  Baker.  ,In  each  case  the  decisions 
of  the  court  have  been  to  the  effect  that  any 
Baker  has  a  right  to  manufacture  and  sell 
chocolate,  and  to  use  his  own  name  on  pack- 
ages of  his  product,  but  his  name  must  be 
accompanied  by  some  statement  or  distin- 


Trade-Names.  37 


guishing  mark  which  will  clearly  differentiate  his  product  from 
that  of  Walter  Baker  &  Co. 

In  the  case  of  Williams  v.  Mitchell  (106  Fed.  R.  168-171), 
the  court  said:  "One  may  not  use  his  own  name  for  such  pur- 
pose when  it  works  a  fraud.  If  he  uses  a  descriptive  word,  or 
a  geographical  name,  or  his  own  name,  it  must  be  so  used  as 
not  to  deprive  others  of  their  rights,  or  to  deceive  the  public, 
and  the  name  must  be  accompanied  with  such  indications  that 
the  thing  manufactured  is  the  work  of  the  one  making  it  as 
would  unmistakably  inform  the  public  of  the  fact." 

4th.  Where  the  resemblance  between  two  trade-marks 
is  only  casual  and  not  sufficiently  pronounced 
to  deceive  a  person  of  ordinary  intelligence, 
there  is  no  infringement. 

A  manufacturer  of  a  lantern  known  as  a  "Hurricane "  lantern 
claimed  that  the  name  of  another  lantern,  called  "Tempest," 
was  an  infringement.  The  court  held  that  while  there  was  a 
resemblance  in  the  names  in  the 

underlying    idea,    they    were    so    \^fmmmimm^mmmmf,mmMmfmm\ 
different  in  appearance  and  sound 
that     any      person     of     average 
common-sense  would  not  mistake 
one  for  the  other. 

"S.  B.,"  a  trade-mark  for 
cough  drops,  was  not  infringed  by 
"B.  and  S." 

"Weber,"  a  mark  for  pianos, 
was  not  infringed  by  "Webster." 

In  this  case  there  is  a  casual  re-  HA"4Kf RS  °J,  FATRWARDETRADE° 
semblance  in  appearance  in  the  "AMEsAELNDiN1(TGiNT0^TAERxD>;rRTms 
two  words,  but  no  resemblance,  is  ONE  OF  THE  BEST-KNOWN 
or  very  little,  in  sound. 

$th.  It  is  a  principle  of  the  law  of  unfair  business 
competition  that  the  plaintiff  must  come  into 
court  with  clean  hands 

The  courts  will  not  use  their  power  to  perpetuate  a  fraud. 
A  trade-mark  conveying  a  misrepresentation  of  the  composition, 
character  or  quality  of  the  goods  with  which  it  is  used,  cannot 
be  protected  against  infringement.  *"* 


CHAPTER  VI 
The  Trade-Mark  Work  of  Munn  &  Company 

WE  began  to  practice  as  trade-mark  and  patent  attorneys 
before  the  Civil  War,  and  for  sixty-five  years  we  have 
been  engaged  continuously  in  this  work. 

During  our  two  generations  of  service  the  law  of  trade-marks 
and  unfair  trade  has  grown  from  a  thin  trickle  of  judicial  de- 
cision to  a  wide  stream  of  statutes  and  precedents.  We  have 
kept  track  of  the  formation  of  this  large  body  of  law,  and  have 
assisted,  in  some  measure,  in  shaping  it. 

Sixty-five  years  ago  there  were  probably  not  more  than 
a  thousand  trade-marks  in  existence  in  the 
United  States.  To-day,  the  registered 
trade-marks  alone  number  above  forty 
thousand. 

Knowledge  is  only  accumulated  by  ex- 
perience, and  we  believe  that  we  are 
justified  by  the  facts  in  saying  that  we  have 
had  a  larger  and  longer  experience  in 
Patent  Office  work  than  any  other  firm  of 
patent  attorneys. 

We  are  entitled  to  practice  before  the 
THE    CORTICEI. LI    patent   Office   in   cases   concerning   trade- 
CA^HBAD'I^'PRINTBD    marks  as  well  as  those  relating  to  patents. 
ON  A  LABEL  PASTED  ON    Our  work  in  this  connection  includes  the 
THE    END    OF    EVERY    designing    of    trade  -  marks ;     preliminary 
searches  of  the  Patent  Office  files;    regis- 
tration of  marks;  and   the  conducting  of 
opposition,  interference  and  cancellation  cases. 
Our  fees  for  trade-mark  service  are : 

For  registration  of  a  trade-mark  (if  there  is  no  opposition), 
$15.00.  To  this  fee  should  be  added  the  government  fee  of 
$10.00  for  registration,  making  the  total  cost  of  registering  a 
trade-mark,  $25.00. 

If  the  mark  includes  a  special  design,  an  additional  fee  of 

$5.00,  to  cover  the  expense  of  preparing  the  drawing,  is  charged. 

For  preparation  of  a  design,  or  devising  a  trade-mark,  where 

the  idea  is  our  own,  we  charge  a  fee  based  on  the  time  and  labor 

involved. 

For  search  of  the  Patent  Office  files  our  charge  is  $5.00.  "This 
search  should  always  be  made  before  an  application  for  registra- 
tion is  filed. 

After  an  application  has  been  filed  for  registration,  an  exam- 
ination is  made  by  the  Patent  Office,  for  the  purpose  of  ascertain- 
ing whether  or  not  the  application  is  anticipated.  If  the  Trade- 


Trade-Names.  39 

Mark  Examiner  in  the  Patent  Office  refuses  to  register  a  trade- 
mark, an  appeal  may  be  taken  to  the  Commissioner  of  Patents. 
If  he  reaffirms  the  Examiner's  decision,  another  appeal  may  be 
taken  to  the  Court  of  Appeals  of  the  District  of  Columbia. 

For  conducting  appeals  our  fee  is  based  on  the  circumstances 
of  the  case. 

It  may  happen  that  you  have  applied  for  registration  of  a 
trade-mark   essentially   similar  to  that  of 

another  registrant  or  applicant.      In  such    SOENITFICAMERKAN 
a    case    the    Commissioner    of    Patents    is 

authorized    to    institute    what    are    called   AMERTCAN~HOMES 
"Interference   Proceedings,"   for   the   pur-  AND  GARDENS 

pose   of    ascertaining   who    is   the    rightful      THE  TITLES  OF  PERIOD- 
owner.      If   you    are   dissatisfied   with   the  ^^T^^K 
decision  of  the  Examiner  of  Interferences,   REGISTRATION. 
by  whom   the   inquiry   is   conducted,   you 

may  appeal  to  the  Commissioner  in  person;  and  from  his 
decision  you  may  appeal  further  to  the  Court  of  Appeals  of  the 
District  of  Columbia.  We  attend  to  all  such  proceedings,  and 
will  state  terms  on  application. 

A  registered  trade-mark  can  be  assigned  in  connection  with 
...  ,  the  good- will  of  a  business  in  which  the  mark  is  used. 

The  assignment  must  be  recorded  in  the  United 
States  Patent  Office  within  three  months  of  its  date; 
otherwise  it  is  void  as  against  any  subsequent  innocent  pur- 
chaser for  a  valuable  consideration.  The  Commissioner  of 
Patents  is  required  to  keep  a  record  of  such  assignments.  Our 
usual  fee  for  preparing  and  recording  an  assignment  is  $5.00. 

Delays  in  registering  trade-marks  are  often  caused  by  the 
1  formation     ^auure  °f  trade-mark  owners  to  supply  us  readily 
Needed*  Be-     with  all  the  information  necessary  to  formulate  an 
fore    an  Ap-     application  for  registration  in  proper  form. 
plication  for  jf  yOU  are  contemplating  the  registration  of  a 

CanBe* P°e"  mark,  note  carefully  the  following  data  which  must 
pared  be  supplied : 

1.  Name  of  the  owner  of  the  trade-mark. 

2.  If  the  owner  is  a  corporation,  the  State  in  which  it  has  been 
incorporated. 

3.  Residence  of  the  owner. 

4.  Place  of  business  of  the  owner. 

5.  Nationality  of  the  owner. 

6.  Whether  the  mark  is  used  in  interstate  or  foreign  commerce, 
or  commerce  with  the  Indian  tribes. 

7.  Class  of  merchandise  on  which  the  mark  is  to  be  used,  and 
the  particular  description  of  the  goods  comprised  in  that  class. 
Thus,  the  applicant  must  not  state  merely  that  a  mark  is  to 
be  used  with  "Shirts,"  but  should  be  more  specific,  and  state 
whether  the  shirts  are  outer  or  under  garments,  and  of  what 
material  they  are  made. 

8.  A  statement  of  the  manner  in  which  the  trade-mark  is  applied 
to  the  goods.     If  by  means  of  labels,  six  copies  of  the  label 
should  be  furnished;    if  otherwise,  six  specimens  of  the  mark 
as  usually  affixed. 

9 .  As  nearly  as  possible  the  earliest  date  on  which  the  mark  was 
used. 


40  Trade.-M.arks. 


10.  Whether  or  not  the  mark  is  registered  in  any  foreign  country; 
and,  if  so,  the  date  of  registration  or  of  the  application  for 
registration. 

11.  If  the  applicant  be  not  a  resident  of  the  United  States,  the 
name  and   address  of  some  person   residing  in   the   United 
States  upon  whom  process  may  be  served  or  notice  of  pro- 
ceedings affecting  ownership.      (If  desired,  we  can  appear  on 
the  Patent  Office  records  as  the  representative  of  a  foreign 
registrant  upon  whom  papers  may  he  served.) 

Many  American  manufacturers  and  exporters  do  not  realize 

the  importance  of  registering  their  trade-marks  in 

Registration     the  foreign  countries  £0  which  their  goods  are  sent. 

Countries™        Knowing  only  the  trade-mark  laws  of  the  United 

States,  where  the  title  is  derived  from  first  use  and 

is  confirmed  by  registration,  they  often  wait  until  it  is  too  late 

before  attempting  to  comply  with  the  registration  laws  in  other 

countries. 

A  fundamental  difference  between  the  trade-mark  laws  of 
the  United  States  and  those  of  Germany,  Austria,  Hungary, 
Argentine  Republic,  Bolivia,  Brazil,  Chili,  China,  Paraguay, 
Peru,  Venezuela,  Uruguay,  Costa  Rica,  Guatemala,  Denmark, 
Finland,  Norway,  Sweden,  Spain,  Japan  and  Cuba,  is  that  in  the 
foreign  countries  named  the  first  to  register  a  trade-mark  acquires 
the  property  therein,  to  the  exclusion  of  the  rightful  owner. 

In  many  other  countries  the  registration  is,  after  a  short 
period,  also  conclusive  proof  of  ownership.  American  exporters 
will  therefore  see  the  importance  of  registering  their  marks  in  the 
foreign  countries  to  which  they  send  their  goods. 

We  are  prepared  to  register  American  marks  in  any  country 
that  has  made  provision  for  the  registration  of  foreign-owned 
marks.  Upon  application,  we  will  send  a  list  of  fees  for  regis- 
tration in  each  country. 

Our  organization  is  complete  in  every  particular.     We  have 

a  highly  trained  staff  of  trade-mark  specialists  which 

Facilities          we  place  at  the  service  of  our  clients.      Our  branch 

office  in  Washington,  located  just  across  the  street 

from  the  Patent  Office,  gives  us  unsurpassed  facilities  for  rapid 

and  accurate  work.     We  are  always  in  close  touch  with  new 

trade-mark   developments   through  being  on   the   ground,   and 

being  engaged  in  daily  practice  before  the  Patent  Office. 

Munn  &  Company  solicit  associate  business  from  other  attorneys 

in  patent  and  trade-mark  matters.     All  opposition, 

Legal  Cau«e»   cancellation,  and  interference  proceedings,  together 

with  suits  for  infringement  and  unfair  competition 

and  other  legal  matters,  are  handled  by  Munn  &  Munn,  Attorneys 

and   Counselors  at  Law,  361   Broadway,  who  are  specialists  in 

patent  and  trade-mark  causes. 

Under    the  present  law  those  applications  for  the  registra- 
tion of  trade-marks  which  have    been    passed    and 
Tr.de-Mark     allowed    are  published  in  the  Official  Gazette,  and, 
within  thirty  days    after   the    date   of   publication, 
any  person  who  believes  he  would  be  damaged  by 
the  registration  of  a  mark   may  oppose  its  registration  by  filing 


Trade-Names.  41 


notice  of  opposition  thereto.  The  opposer  need  not  be  the 
owner  of  a  registered  trade-mark,  but,  if  registration  is  sought 
by  another  for  a  trade-mark  so  closely  resembling  one  in  use  by 
the  opposer  on  goods  of  the  same  descriptive  properties  as  to  be 
liable  to  cause  confusion  or  mistake  in  the  minds  of  the  public 
or  to  deceive  purchasers,  the  registration  of  such  mark  to  the 
applicant  would  justify  the  opposer's  belief  that  he  would  be 
damaged  thereby. 

Notices  of  opposition  to  be  effective  must  be  filed  within 
thirty  days  after  the  date  of  publication  of  the  mark  sought  to 
be  registered  in  the  Official  Gazette. 

Our  trade-mark  protective  bureau  is  designed  to  carefully 
scrutinize  the  trade-marks  published  each  week  in  the  Official 
Gazette,  and  to  notify  such  of  our  clients  as  avail  themselves  of 
our  services  of  the  publication  of  any  trade-mark  for  which  regis- 
tration is  sought  which  would  b2  liable  to  conflict  with  any 
trade-mark  in  use  by  such  client,  in  order  that  he  may  interpose 
opposition  to  registration  if  he  so  elects.  We  make  a  nominal 
charge  for  these  services  of  $10.00  a  year  for  each  mark  sub- 
mitted. The  marks  submitted  are  recorded  and  classified  in 
accordance  with  the  official  classification  of  the  Patent  Office, 
so  that  each  week  a  comparison  with  those  published  in  the 
Official  Gazette  may  be  readily  had  and  resemblances  discovered. 


MUNN  &  COMPANY 

Patent  Attorney* 

361  BROADWAY  Branch  Office,  625  F  STREET 

NEW  YORK  WASHINGTON,  D.  C. 


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